DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-43, 45-47, 53 and 58 are cancelled.
Claims 44, 48-52, 54-57, 59-63 are pending.
Claims 51 and 60 are withdrawn.
Claims 44, 48-50, 52, 54-57, 59, 61-63 are addressed on the merits herein
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/4/26 has been entered.
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.
Claim 63 is 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.
Re claim 63, claim 63 recites, “the coupled edges” in line 5, “the plane” in line 5, “the coupled panels” in line 5-6, “the respective edges” in line 6, “the direction” in line 7, “the plane” in line 8 and “the coupled panels” in line 8. There is insufficient antecedent basis for these limitations in the claims. It appears this language is intended to refer to, “the one edge and the other edge,” “a plane,” “the first and second panels,” “respective edges,” “a direction,” “a plane,” and “the first and second panels and will be interpreted as such.
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.
Claim(s) 44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pervan et al (“Pervan”) (US 2013/0333182).
Re claim 44, Pervan discloses a decorative panel (1) for forming a covering (Fig. 5a), wherein the decorative panel (1) comprises:
a first pair of opposite edges ([0168] short edges);
a second pair of opposite edges ([0168] long edges);
wherein the first pair of opposite edges ([0168] short edges) comprise first coupling parts (left/right edges of 1; 9/10, 14/15) that allow two such panels (1, 1’), including the decorative panel (1), to be coupled together (Fig. 2a) and wherein the first coupling parts (left/right edges of 1; 9/10, 14/15) have the following characteristic features:
the first coupling parts (left/right edges of 1; 9/10, 14/15) comprise a first horizontally acting locking system (Fig. 5a) that in a coupled state of the two such panels (1, 1’) produces locking in a plane (Fig. 5a, horizontal plane) of the decorative panel (1) and perpendicular to (Fig. 5a, vertically) the first pair of opposite edges (left/right edges of 1);
the first coupling parts (left/right edges of 1; 9/10, 14/15) also comprise a first vertically acting locking system (Fig. 5a) that in a coupled state of the two such panels (1, 1’) achieves locking transverse to (Fig. 5a, vertically) the plane (Fig. 5a) of the decorative panel (1);
wherein the second pair of opposite edges (Fig. 5a; [0168]) comprises second coupling parts (9/10, 14/15) that allow two such panels (1, 1’) to be coupled together (Fig. 5a) and wherein the second coupling parts (9/10, 14/15) have the following characteristic features:
the second coupling parts (9/10, 14/15) comprise a second horizontally acting locking system (Fig. 5a) that in a coupled state (Fig. 5a) of the two such panels (1, 1’) produces locking in the plane (Fig. 5a; horizontal plane) of the decorative panel (1) and perpendicular to (Fig. 5a) the second pair of opposite edges (left edge of 1’, right edge of 1);
the second coupling parts (9/10, 14/15) also comprise a second vertically acting locking system (Fig. 5a) that in a coupled state (Fig. 5a) of the two such panels (1, 1’) produces locking transverse to (Fig. 5a) the plane (horizontal plane) of the decorative panel (1);
wherein the second coupling parts (9/10, 14/15) of the second pair of opposite edges ([0168]) are made from a material (Fig. 5a showing 1 as a single unit) of the decorative panel (1);
the second horizontally acting locking system (Fig. 5a) of the second pair of opposite edges ([0168], Fig. 5a) is at least formed from an upward directed lower hook-shaped portion (6) that is located on one edge of the second pair of opposite edges (right edge of 1), as well as a downward directed upper hook-shaped portion (see examiner comments) that is located on an opposite edge (left edge of 1) of the second pair of opposite edges (Fig. 5a),
wherein the upward directed lower hook-shaped portion (6) consists of a first lip (see examiner comments) with an upward directed locking element (8) that defines, proximally thereto (Fig. 5a), a female part (Fig. 5a) in the form of a first recess (the recess above 6), while the upper hook-shaped portion (see examiner comments) consists of a second lip (see examiner comments) with a downward directed locking element (see examiner comments) that forms a male part (Fig. 5a);
wherein the second coupling parts (9/10, 14/15) are configured so that the male part (Fig. 5a) of the a first panel (1’) of the two such panels (1, 1’) can be brought into the female part (Fig. 2ac-2d) of a second panel (1) of the two such panels (1, 1’) by means of a downward motion (Fig. 2c-2d being at least partially downward) of the first panel (1’) relative to the second panel (1), such that said two such panels (1, 1’) can be coupled together (Fig. 2c-2d) on the second pair of opposite edges Fig. 5a; [0168]);
wherein a proximal end of the downward directed locking element (see examiner comments) comprises a first contact surface (at 15), wherein a proximal end of the upward directed locking element (8) comprises a second contact surface (at 15);
wherein in the coupled state (Fig. 5a) of the first panel (1’) to the second panel (1) on the second pair of opposite edges (Fig. 5a, [0168]) there is contact between (Fig. 5a) the first contact surface (at 15) of the first panel (1’) and the second contact surface (at 15) of the second panel (1);
wherein the contact (at 15) forms a first contact zone (15);
wherein in the coupled state (Fig. 5a) of the first panel (1’) to the second panel (1) on the second pair of opposite edges (Fig. 5a, [0168]) there is no contact between (S) an underside (underside of that shown in the examiner comments) of the downward directed locking element (see examiner comments) of the first panel (1’) and an upper side (top side of 6) of the first lip (at 6) of the upward directed lower hook-shaped portion (6) of the second panel (1), wherein a distance between (S) the underside (bottom of that shown in the examiner comments) of the downward directed locking element (see examiner comments) of the first panel (1’) and the upper side (top of 6) of the first lip (at 6) of the upward directed lower hook-shaped portion (6) of the second panel (1) is everywhere at least 0.05 mm ([0056]);
wherein the second vertically active locking system (Fig. 5a) comprises a first locking part (9) and a second locking part (10) on the second pair of opposite edges (Fig. 5a, [0168]),
wherein the first locking part (9) is located at a distal end of the downward directed locking element (see examiner comments), and
wherein the second locking part (10) is located on a proximate end of one edge (right edge of 1) of the second pair of opposite edges (left/right edges of 1),
wherein the first locking part (9) comprises a third contact surface (at 13), wherein the second locking part (10) comprises a fourth contact surface (at 13);
wherein in the coupled state (Fig. 5a) of the first panel (1’) to the second panel (1) on the second pair of opposite edges (Fig. 5a), the third contact surface 9at 13) of the first panel (1’) comes into contact In (Fig. 5a) a second contact zone (13) with the fourth contact surface (at 13) of the second panel (1);
wherein locking is formed (Fig. 5a) in a direction perpendicular to (Fig. 5a, vertically) the first panel (1’) coupled to the second panel (1); and
wherein in the coupled state of the first panel to the second panel on the second pair of opposite edges wherein the male part of the first panel is brought into the female part of the second panel, a vertical projection of the first locking part of the first panel in the plane of the decorative panel overlaps over less than 0.10mm with the vertical projection the second locking part of the second panel in the plane of the decorative panel (as this is an and/or clause); and/or
wherein in the coupled state (Fig. 5a) of the first panel (1’) to the second panel (1) on the second pair of opposite edges (Fig. 5a) wherein the male part (of 1’) of the first panel (1’) is brought into (Fig. 5a) the female part (of 1) of the second panel (1), the vertical projection (of 13) of the second contact zone (13) in the plane of the decorative panel (1), extends over a distance ([0123] disclosing 1mm, or .5mm), measured perpendicular to (Fig. 5a) the second pair of opposite edges (right edge of 1, left edge of 1’),
but fails to disclose the second contact zone extending over a distance less than 0.10mm.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the decorative panel of Pervan with the second contact zone extending over a distance less than 0.10mm in order to lessen the contact area between the panels at 13, which would in turn reduce friction during assembly making assembly easier. In addition, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
It should further be noted that the language “wherein the second coupling parts are configured so that the male part of the a first panel of the two such panels can be brought into the female part of a second panel of the two such panels by means of a downward motion of the first panel relative to the second panel, such that said two such panels can be coupled together on the second pair of opposite edges” is considered product-by-process; therefore, determination of patentability is based on the product itself. See M.P.E.P. §2113. The patentability of the product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the same prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985).
Additionally, the language “can be” is language that suggests or makes optional/contingent the subsequent limitation or limitations. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. See § MPEP 2103 (C).
In the event that the Examiner overbroadly construed the language, “wherein the second coupling parts are configured so that the male part of the a first panel of the two such panels can be brought into the female part of the a second panel of the two such panels by means of a downward motion of the first panel relative to the second panel, such that said two such panels can be coupled together on the second pair of opposite edges,” see alternative rejection below.
Claim(s) 44, 48-50, 51-52, 54-57, 59-63 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pervan et al (“Pervan”) (US 2013/0333182) in view of Pervan (“Pervan 2”) (US 7,516,588).
Re claim 44, Pervan discloses a decorative panel (1) for forming a covering (Fig. 5a), wherein the decorative panel (1) comprises:
a first pair of opposite edges ([0168] short edges);
a second pair of opposite edges ([0168] long edges);
wherein the first pair of opposite edges ([0168] short edges) comprise first coupling parts (left/right edges of 1; 9/10, 14/15) that allow two such panels (1, 1’), including the decorative panel (1), to be coupled together (Fig. 2a) and wherein the first coupling parts (left/right edges of 1; 9/10, 14/15) have the following characteristic features:
the first coupling parts (left/right edges of 1; 9/10, 14/15) comprise a first horizontally acting locking system (Fig. 5a) that in a coupled state of the two such panels (1, 1’) produces locking in a plane (Fig. 5a, horizontal plane) of the decorative panel (1) and perpendicular to (Fig. 5a, vertically) the first pair of opposite edges (left/right edges of 1);
the first coupling parts (left/right edges of 1; 9/10, 14/15) also comprise a first vertically acting locking system (Fig. 5a) that in a coupled state of the two such panels (1, 1’) achieves locking transverse to (Fig. 5a, vertically) the plane (Fig. 5a) of the decorative panel (1);
wherein the second pair of opposite edges (Fig. 5a; [0168]) comprises second coupling parts (9/10, 14/15) that allow two such panels (1, 1’) to be coupled together (Fig. 5a) and wherein the second coupling parts (9/10, 14/15) have the following characteristic features:
the second coupling parts (9/10, 14/15) comprise a second horizontally acting locking system (Fig. 5a) that in a coupled state (Fig. 5a) of the two such panels (1, 1’) produces locking in the plane (Fig. 5a; horizontal plane) of the decorative panel (1) and perpendicular to (Fig. 5a) the second pair of opposite edges (left edge of 1’, right edge of 1);
the second coupling parts (9/10, 14/15) also comprise a second vertically acting locking system (Fig. 5a) that in a coupled state (Fig. 5a) of the two such panels (1, 1’) produces locking transverse to (Fig. 5a) the plane (horizontal plane) of the decorative panel (1);
wherein the second coupling parts (9/10, 14/15) of the second pair of opposite edges ([0168]) are made from a material (Fig. 5a showing 1 as a single unit) of the decorative panel (1);
the second horizontally acting locking system (Fig. 5a) of the second pair of opposite edges ([0168], Fig. 5a) is at least formed from an upward directed lower hook-shaped portion (6) that is located on one edge of the second pair of opposite edges (right edge of 1), as well as a downward directed upper hook-shaped portion (see examiner comments) that is located on an opposite edge (left edge of 1) of the second pair of opposite edges (Fig. 5a),
wherein the upward directed lower hook-shaped portion (6) consists of a first lip (see examiner comments) with an upward directed locking element (8) that defines, proximally thereto (Fig. 5a), a female part (Fig. 5a) in the form of a first recess (the recess above 6), while the upper hook-shaped portion (see examiner comments) consists of a second lip (see examiner comments) with a downward directed locking element (see examiner comments) that forms a male part (Fig. 5a);
wherein a proximal end of the downward directed locking element (see examiner comments) comprises a first contact surface (at 15), wherein a proximal end of the upward directed locking element (8) comprises a second contact surface (at 15);
wherein in the coupled state (Fig. 5a) of the first panel (1’) to the second panel (1) on the second pair of opposite edges (Fig. 5a, [0168]) there is contact between (Fig. 5a) the first contact surface (at 15) of the first panel (1’) and the second contact surface (at 15) of the second panel (1);
wherein the contact (at 15) forms a first contact zone (15);
wherein in the coupled state (Fig. 5a) of the first panel (1’) to the second panel (1) on the second pair of opposite edges (Fig. 5a, [0168]) there is no contact between (S) an underside (underside of that shown in the examiner comments) of the downward directed locking element (see examiner comments) of the first panel (1’) and an upper side (top side of 6) of the first lip (at 6) of the upward directed lower hook-shaped portion (6) of the second panel (1), wherein a distance between (S) the underside (bottom of that shown in the examiner comments) of the downward directed locking element (see examiner comments) of the first panel (1’) and the upper side (top of 6) of the first lip (at 6) of the upward directed lower hook-shaped portion (6) of the second panel (1) is everywhere at least 0.05 mm ([0056]);
wherein the second vertically active locking system (Fig. 5a) comprises a first locking part (9) and a second locking part (10) on the second pair of opposite edges (Fig. 5a, [0168]),
wherein the first locking part (9) is located at a distal end of the downward directed locking element (see examiner comments), and
wherein the second locking part (10) is located on a proximate end of one edge (right edge of 1) of the second pair of opposite edges (left/right edges of 1),
wherein the first locking part (9) comprises a third contact surface (at 13), wherein the second locking part (10) comprises a fourth contact surface (at 13);
wherein in the coupled state (Fig. 5a) of the first panel (1’) to the second panel (1) on the second pair of opposite edges (Fig. 5a), the third contact surface 9at 13) of the first panel (1’) comes into contact In (Fig. 5a) a second contact zone (13) with the fourth contact surface (at 13) of the second panel (1);
wherein locking is formed (Fig. 5a) in a direction perpendicular to (Fig. 5a, vertically) the first panel (1’) coupled to the second panel (1); and
wherein in the coupled state of the first panel to the second panel on the second pair of opposite edges wherein the male part of the first panel is brought into the female part of the second panel, a vertical projection of the first locking part of the first panel in the plane of the decorative panel overlaps over less than 0.10mm with the vertical projection the second locking part of the second panel in the plane of the decorative panel (as this is an and/or clause); and/or
wherein in the coupled state (Fig. 5a) of the first panel (1’) to the second panel (1) on the second pair of opposite edges (Fig. 5a) wherein the male part (of 1’) of the first panel (1’) is brought into (Fig. 5a) the female part (of 1) of the second panel (1), the vertical projection (of 13) of the second contact zone (13) in the plane of the decorative panel (1), extends over a distance ([0123] disclosing 1mm, or .5mm), measured perpendicular to (Fig. 5a) the second pair of opposite edges (right edge of 1, left edge of 1’),
but fails to disclose the second contact zone extending over a distance less than 0.10mm, and wherein the second coupling parts are configured so that the male part of the a first panel of the two such panels can be brought into the female part of the a second panel of the two such panels by means of a downward motion of the first panel relative to the second panel, such that said two such panels can be coupled together on the second pair of opposite edges.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the decorative panel of Pervan with the second contact zone extending over a distance less than 0.10mm in order to lessen the contact area between the panels at 13, which would in turn reduce friction during assembly making assembly easier. In addition, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
In addition, Pervan 2 discloses wherein the second coupling parts (5a/5b) are configured so that the male part (5a) of the a first panel (A) of the two such panels (A, B) can be brought into the female part (5b) of the a second panel (B) of the two such panels (A, B) by means of a downward motion (Col 6 line 65 – Col 7 line 10) of the first panel (A) relative to the second panel (B), such that said two such panels (A, B) can be coupled together on the second pair of opposite edges (5a/5b).
I would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the decorative panel of Pervan wherein the second coupling parts are configured so that the male part of the a first panel of the two such panels can be brought into the female part of the a second panel of the two such panels by means of a downward motion of the first panel relative to the second panel, such that said two such panels can be coupled together on the second pair of opposite edges as disclosed by Pervan 2 in order to provide a simple, straight forward, easy manner of assembly of the second pair of edges, as a purely vertical motion would require less dexterity to assemble than that of an angling motion.
It should further be noted that the language “wherein the second coupling parts are configured so that the male part of the a first panel of the two such panels can be brought into the female part of a second panel of the two such panels by means of a downward motion of the first panel relative to the second panel, such that said two such panels can be coupled together on the second pair of opposite edges” is considered product-by-process; therefore, determination of patentability is based on the product itself. See M.P.E.P. §2113. The patentability of the product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the same prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985).
Additionally, the language “can be” is language that suggests or makes optional/contingent the subsequent limitation or limitations. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. See § MPEP 2103 (C).
Re claim 48, Pervan as modified discloses the decorative panel as in claim 44, wherein in the coupled state (Fig. 5a) of the first panel (1’) to the second panel (1) on the second pair of opposite edges (Fig. 5a) wherein the male part (of 1’) of the first panel (1’) is brought into (Fig. 5a) the female part (of 1) of the second panel (1), and the tangent (Fig. 5a) in the second contact zone (13), but fails to disclose the tangent in the second contact zone makes an angle with the plane of the decorative panel of at least 15°.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the decorative panel of Pervan with the tangent in the second contact zone makes an angle with the plane of the decorative panel of at least 15° in order to angle the contact zone such that the contact surfaces slide together easier during assembly, allowing for a degree of “snap-fitting” into place. In addition, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Re claim 49, Pervan as modified discloses the decorative panel as in claim 44, wherein at least one of: the third contact surface (at 13) is located on an upper side (upper side of that shown in the examiner comments) of a projecting component (see examiner comments) of the downward directed locking element (see examiner comments), and wherein the fourth contact surface (at 13) is formed by at least a part of an upper side (top of 9a) of an undercut (9a) in one edge of the second pair of opposite edges (Fig. 5a) that comprises the female part (of 1); and/or the third contact surface is located on an underside of a second recess in the downward directed locking element and in that the fourth contact surface is formed at least partly on an underside of a component that projects on one edge of the second pair of opposite edges that comprises the female part (as this is an and/or clause).
Re claim 50, Pervan as modified discloses the decorative panel as in claim 44, wherein the third contact surface (13) is located on an upper side (top of that shown in the examiner comments of a projecting component (see examiner comments) of the downward directed locking element (see examiner comments), wherein the projecting component (see examiner comments) is located under a second recess (9) in the downward directed locking element (see examiner comments); and wherein the fourth contact surface (at 13) is formed by at least a part of an upper side (upper side of 9a) of an undercut (9a) in one edge (of 1) of the second pair of opposite edges (Fig. 5a) that comprises the female part (of 1); and in that opposite edge (of 1’) of the second pair of opposite edges (Fig. 5a) that comprises the male part (of 1’) comprises a third sealing face (at P1) substantially perpendicular to (Fig. 5a) the plane (horizontally) of the decorative panel (1’) and wherein one edge (of 1) of the second pair of opposite edges (Fig. 5a) that comprises the female part (of 1) comprises a fourth sealing face (at P1) substantially perpendicular to (Fig. 5a) the plane (horizontally) of the decorative panel (1), wherein in the coupled state (Fig. 5a) of the first panel (1’) to the second panel (1) on the second pair of opposite edges (Fig. 5a) wherein the male part (of 1’) of the first panel (1’) has been brought into (Fig. 5a) the female part (of 1) of the second panel (1), the third sealing face (at P1) of the first panel (1’) and the fourth sealing face (at P1) of the second panel (1) come into contact (Fig. 5a), wherein the one edge (of 1) of the second pair of opposite edges (Fig. 5a) that comprises the female part (of 1) above the plane of the decorative panel (1) and that comprises a most proximally located point (Fig. 5a) of the undercut (9a) in the one edge (of 1) of the second pair of opposite edges (Fig. 5a) that comprises the female part (of 1), does not comprise any components (Fig. 5a) that project outside the fourth sealing face (at P1, P1 being linear to the upper surface and lower surface to 9b).
Re claim 52, Pervan as modified discloses the decorative panel as in claim 50, wherein in the coupled state (Fig. 5a) of the first panel (1’) to the second panel (1) on the second pair of opposite edges (Fig. 5a), wherein the male part (of 1’) of the first panel (1’) has been brought into (Fig. 5a) the female part (of 1) of the second panel (1), the third sealing face (at P1) of the first panel (1’) and the fourth sealing face (at P1) of the second panel (1) come into contact (Fig. 5a) or abut one another, wherein the fourth contact surface (at P1) is formed by the upper side (upper side of 9a) of the undercut (9a) in the one edge (left edge of 1’) of the second pair of opposite edges (Fig. 5a) that comprises the female part (of 1).
Re claim 54, Pervan as modified discloses the decorative panel as in claim 44, wherein the second coupling parts (9/10, 14/15) on the second pair of opposite edges (Fig. 5a) are configured so that in the coupled state (Fig. 5a) of first panel (1’) to second panel (1) on the second pair of opposite edges (Fig. 5a) wherein the male part (of 1’) of the first panel (1’) has been brought into (Fig. 5a) the female part (of 1) of the second panel (1), an angle between (at 15) the plane (horizontally) of the decorative panel (1) and a tangent (at 15) in the first contact zone (15) is 90° or less than 90° (Fig. 5a, showing less than 90°), wherein the angle (Fig. 5a) is in a proximal direction (Fig. 5a) of the first such panel (1’).
Re claim 55, Pervan as modified discloses the decorative panel as in claim 44, wherein a distal end (end of 6) of the upward directed locking element (6) or a distal end (end of 8) of the first lip (8) of the upward directed lower hook-shaped portion (se examiner comments) comprises a fifth locking part (see examiner comments) for producing, in the coupled state (Fig. 5a) of the first panel (1’) to the second panel (1) on the second pair of opposite edges (Fig. 5a) wherein the male part (of 1’) of the first panel (1) has been brought into (Fig. 5a) the female part (of 1) of the second panel (1), locking in a direction perpendicular to the plane (horizontally) of the decorative panel (1), wherein the fifth locking part (see examiner comments) of the second panel (1) interacts with (Fig. 5a) a sixth locking part (see examiner comments) on the opposite edge (of 1’) of the first panel (1’).
Re claim 56, Pervan as modified discloses the decorative panel as in claim 55, wherein in the coupled state (Fig. 5a) of the first panel (1’) to the second panel (1) on the second pair of opposite edges (Fig. 5a) the fifth locking part (see examiner comments) of the second panel (1) comes into contact with (Fig. 5a) the sixth locking part (see examiner comments) on the opposite edge (of 1’) of the first panel (1’).
Re claim 57, Pervan as modified discloses the decorative panel as in claim 56, wherein, the fifth locking part (see examiner comments) is at least formed by a projection (at 8) at the distal end of the upward directed locking element (8) or at the distal end of the (8) of the upward directed lower hook-shaped portion (see examiner comments) of the lower hook-shaped portion (6) and the sixth locking part (see examiner comments) is at least formed by an undercut or a recess (Fig. 5a) on the opposite edge (right edge of 1’) of the second pair of opposite edges (Fig. 5a) that comprises the male part (of 1’); or wherein, the fifth locking part is at least formed by an undercut at the distal end of the upward directed locking element or at the distal end of the first lip of the upward directed lower hook-shaped portion and the sixth locking part is at least formed by a projecting part on the opposite edge (right edge of 1’) of the second pair of opposite edges (Fig. 5a) that comprises the male part; wherein the undercut makes an angle of between 20° and 30° with the plane of the decorative panel (as this is an or clause).
Re claim 59, Pervan as modified discloses the decorative panel as in claim 56, wherein the fifth locking part (see examiner comments) is at least formed by an undercut (Fig. 5a) at the distal end of the upward directed locking element (6) or at the distal end of the first lip of the upward directed lower hook-shaped portion (as this is an or clause); and in that the sixth locking part (see examiner comments) is at least formed by a projecting part (at 8) on the opposite edge (right edge of 1’) of the second pair of opposite edges (Fig. 5a) that comprises the male part (of 1’).
Re claim 61, Pervan as modified discloses the decorative panel as in claim 44, wherein the first coupling parts (left/right edges of 1; 9/10, 14/15; [0168]) on the first pair of opposite edges (left/right edges of 1) are made from material of (Fig. 5a) the decorative panel (1).
Re claim 62, Pervan as modified discloses the decorative panel as in claim 61, wherein the opposite edge (Fig. 5a) of the second pair of opposite edges (Fig. 5a) that comprises the male part (of 1’) on the first panel (1’) can be coupled to ([0139]) another edge (of 1) of the first pair of opposite edges ([0138]) that comprises the groove (Fig. 5a) on the second panel (1), wherein both locking of the opposite edge (Fig. 5a) of the second pair of opposite edges (Fig. 5a) with the other edge (Fig. 5a) of the first pair of opposite edge (left/right edges of 1) in the plane of the decorative panel (1) and perpendicular to the opposite edge (Fig. 5a) and the other edge (Fig. 5a) is obtained and locking in a direction perpendicular to (Fig. 5a) the plane (horizontally) of the decorative panels (1).
Re claim 63, Pervan as modified discloses the decorative panel as in claim 61, wherein an opposite edge (Fig. 5a) of the first pair of opposite edges (of 1’) that comprises a tongue (10) can be coupled to ([0138]) the one edge (of 1) of the second pair of opposite edges (Fig. 5a) that comprises the female part (of 1), wherein both locking of the coupled edges (Fig. 5a) in the plane of the coupled panels (1, 1’) and perpendicular to (Fig. 5a) the respective edges (of 1, of 1’) is obtained, and locking in the direction perpendicular to (Fig. 5a) the plane (horizontally) of the coupled panels (1, 1’).
Examiner Comments
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477
819
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Response to Arguments
Claim Rejections 35 USC 112: Applicant’s argument with respect to the claims rejected under 35 USC 112 is partially persuasive and rejection of the claims pursuant to 35 USC 112 (for the reasons stated in the previous rejection) is hereby partially withdrawn. However, no remarks and/or amendments were presented regarding claim 63, and thus, rejection of claim 63 is maintained.
Claim Rejections 35 USC 103: Applicant’s arguments with respect to all claims have been considered but are not persuasive.
Applicant argues that the amended language now recites that the male part can be brought into the female part by means of a downward motion, and that Pervan fails to discos this feature. However, as outlined in the above, it is the Examiner’s position that Pervan still reads on this limitation. Fig. 3a-3f, for example, show the male part engaging the female part. The rear side of the panel, regardless of angling, must be moved downwardly in order to fully lock. This constitutes downward motion. It appears as though Applicant contends that because the male part doesn’t move downward itself, it cannot read on the claims. However, the claims do not recite that the male part itself moves downward. In addition, as outlined in the previous Remarks, firstly, the language “can be” is language that suggests or makes optional the subsequent limitation or limitations. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. See § MPEP 2103 (C). Second, the phrase “ wherein the second coupling parts are configured so that the male part of a first panel of the two such panels can be brought into the female part of a second panel of the two such panels by means of a downward motion of the first panel relative to the second panel, such that said two such panels can be coupled together on the second pair of opposite edges” is a statement of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Third, the language “wherein the second coupling parts are configured so that the male part of a first panel of the two such panels can be brought into the female part of a second panel of the two such panels by means of a downward motion of the first panel relative to the second panel, such that said two such panels can be coupled together on the second pair of opposite edges” is directed to a manner of assembly, and is thus considered product-by-process; therefore, determination of patentability is based on the product itself. See M.P.E.P. §2113. The patentability of the product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the same prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985). Fourth, the language does not state that the panels are assembly by solely downward motion (or, purely downward motion). In looking at Fig. 4a-4f of Pervan, clearly, part of the panel must move downwards for assembly. Even though there is an angling (or turning) motion, there is clearly a vertical displacement (downward) movement component thereto, which constitutes coupling with a downward motion. Thus, Pervan reads on the claimed limitation.
In the interest of compact prosecution, it is noted that claim 44 is further rejected over Pervan in view of Pervan 2, Pervan 2 expressly identifying that it is known the connect a second pair of edges together by means of a downward motion.
In addition, Applicant argues that the amendment is not directed to merely a sequence of installation steps. It is true that there is no sequence of steps therein. However, it is difficult to understand how a limitation directed to connecting the first panel to the second panel by means of a downward motion is not directed to a single method step of assembly. It has no bearing on the assembled product itself, or the decorative panel itself. It is solely directed to the manner by which two panels are connected together, or, as stated otherwise, the process by which a final product is assembled. Applicant next argues that Pervan repeatedly and expressly characterizes its locking system of angling. It is not disputed that Pervan’s panels lock together by angling. What is disputed is that angling has no “downward motion” component to it. When reviewing Fig. 3a-3f, it is clearly impossible for the panels to be locked together without some degree of downward motion from the right-side panel. If the intent is that the male part alone is inserted by a downward motion of the male part, clarifying claim language should be utilized.
In addition, Applicant argues that claim language regarding less than 0.10 mm contact zone and 0.05mm clearance not being routine dimensional modification. This argument was specifically addressed in the 6/4/26 Final Rejection, pages 20-21, and need not be addressed herein again.
Next, Applicant argus that the rejection’s proposed friction reducing rational does not provide a reason to redesign Pervan. Applicant contends that such a motivation does not explain why one of ordinary skill would reconfigure Pervan to meet such a limitation. Applicant’s contention that the modification would somehow require a complete redesign of Pervan is conclusory. Merely changing a single size would not somehow change the entire physical panel. There appears to be no evidence, absent Applicant’s statements, that changing a size of an individual portion of a panel of Pervan would necessitate an entire redesign of the panel. In addition, regardless of this point, it is not just the Examiner’s opinion that a change in size would have been obvious, as it has been held that a change in size is well within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
As such, the prior art meets the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE WALRAED-SULLIVAN whose telephone number is (571)272-8838. The examiner can normally be reached Monday - Friday 8:30am - 5:00pm.
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KYLE WALRAED-SULLIVAN
Primary Examiner
Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635
