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Claims 51 and 60 are withdrawn.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
Claim Objections
Claim 52 is objected to because of the following informalities: Claim 52, on page 9, lines 4-5 appears to be an incomplete statement. Appropriate correction is required.
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 44, 48-52, 24-63 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
At the outset, due to the nature of the rejections under 35 USC 112, regardless of interpretation below, if/upon amendment, any recitations to previously introduced features must be referred to with language such as, “the” or “said,” to make clear Applicant is intending to refer to the same feature. In other words, if/upon amendment, it is possible that only one instance need to be amended to “a” or “an” so long as subsequent recitations conform to the above. Consistent language should be used throughout.
Re claim 44, on page 5, claim 44 recites, “the first panel” in line 4, “the second panel” in line 4, “the first panel” in line 6, “the second panel” in line 6, “the first panel” in line 9, “the second panel” in line 9, “the first panel” in line 11 and “the second panel” in line 12. There is insufficient antecedent basis for these limitations in the claims. It appears this language is intended to refer to, “a first panel” and “a second panel” and will be interpreted as such.
In addition, on page 6, claim 44 recites, “the first panel” in line 1, “the second panel” in line 1, “the direction” in line 5,” “the first panel” in line 7, “the second panel” in line 7, “the first panel” in line 10, “the second panel” in line 13, “the first panel” in line 14, “the second panel” in line 14, “the first panel” in line 15 and “the second panel” in line 15. There is insufficient antecedent basis for these limitations in the claims. It appears this language is intended to refer to, “a first panel,” “a second panel” and “a direction” and will be interpreted as such.
In addition, claim 44 (and the dependent claims) recites the first panel and the second panel throughout. Claim 44 is drawn to a decorative panel. The claims further recite structure and features pertaining to the decorative panel, and to the first/second panels. It is not clear if the decorative panel is the first panel (or the second panel) or if the decorative panel is in addition to the first and second panels. Clarification is requested if the claims are utilizing 2 or 3 panels. It appears as though the decorative panel is the same as the first panel. If this is the case, terminology used throughout the claims should reflect that for clarity.
Re claim 44, claim 44 recites, “the first panel” in line 2, “the second panel” in line 2, “the first panel” in line 3, and “the second panel” in line 4. There is insufficient antecedent basis for these limitations in the claims. It appears this language is intended to refer to, “a first panel” and “a second panel” and will be interpreted as such.
Re claim 49, claim 49 recites, “the upper side” in line 3, “the upper side” in line 5, “the underside” in line 8, and “the underside” in line 10. There is insufficient antecedent basis for these limitations in the claims. It appears this language is intended to refer to, “an underside” and will be interpreted as such.
Re claim 50, claim 50 recites, “the upper side” in line 2, “the upper side” in line 6, “the first panel” in line 14, “the second panel” in line 14, “the first panel” in line 15, “the second panel” in line 16, “the first panel” in line 17 and “the second panel” in line 17. There is insufficient antecedent basis for these limitations in the claims. It appears this language is intended to refer to, “an upper side,” “a first panel” and “a second panel” and will be interpreted as such.
Re claim 52, claim 52 recites, “a third sealing face” in line 3 and “a fourth sealing face” in line 6. A third/fourth sealing face is already introduced in claim 50, from which claim 52 depends. It is thus unclear if this is the same sealing face or a different sealing face than that of claim 50. It appears this language is intended to refer to, “the third sealing face” and “the fourth sealing face” and will be interpreted as such.
In addition, claim 52 recites, “the first panel” in line 8, “the second panel” in line 8, “the first panel” in line 10, “the second panel” in line 11, “the first panel” in line 12, “the second panel” in line 13 and “the upper side” in line 14. There is insufficient antecedent basis for these limitations in the claims. It appears this language is intended to refer to, “a first panel,” “a second panel” and “an upper side” and will be interpreted as such.
Re claim 54, claim 54 recites, “the first panel” in line 3, “the second panel” in line 3, “the first panel” in line 5, and “the second panel” in line 9. There is insufficient antecedent basis for these limitations in the claims. It appears this language is intended to refer to, “a first panel” and “a second panel” and will be interpreted as such.
Re claim 55, claim 55 recites, “the first panel” in line 4, “the second panel” in line 4, “the second panel” in line 6 and “the direction” in line 7. There is insufficient antecedent basis for these limitations in the claims. It appears this language is intended to refer to, “a first panel,” “a second panel” and “a direction” and will be interpreted as such.
Re claim 56, claim 56 recites, “the first panel” in line 2, “the second panel” in line 2, “the second panel” in line 3, and “the first panel” in line 4. There is insufficient antecedent basis for these limitations in the claims. It appears this language is intended to refer to, “a first panel” and “a second panel” and will be interpreted as such.
Re claim 62, claim 62 recites, “the first panel” in line 3, “the second panel” in line 5 and “the direction” in line 9. There is insufficient antecedent basis for these limitations in the claims. It appears this language is intended to refer to, “a first panel,” “a second panel” and “a direction” and will be interpreted as such.
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(s) 57, 59, 61 is/are rejected as being dependent on a rejected claim.
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, 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).
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 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 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 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 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 hte 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);
the second coupling parts (9/10, 14/15) are configured so that two such panels (1, 1’) can be coupled together on the second pair of opposite edges (right edge of 1, left edge of 1’) by means of a downward motion (1 and 1’ are capable of assembly by at least partial vertical motion) of a first panel (1’) relative to a second panel (1) of the two such panels (1, 1’),
wherein the male part (Fig. 5a) of the first panel (1’) is brought into the female part (Fig. 5a) of the second panel (1);
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 the 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).
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 the 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 the 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 the underside of a second recess in the downward directed locking element and in that the fourth contact surface is formed at least partly on the 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 the 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 the 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 the opposite edge (left 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 the one edge (left edge of 1’) of the second pair of opposite edges (Fig. 5a) that 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) 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 the 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); and in that the first coupling parts (9/10, 14/15) on the first pair of opposite edges (left/right edges of 1; [0168]) are configured so that two panels (1, 1’) can be coupled together on the first pair of opposite edges (left/right 1) by means of a turning motion ([0120]) and/or by means of a horizontal sliding motion with a snap effect (as this is an and/or clause).
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 the 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
PNG
media_image1.png
477
819
media_image1.png
Greyscale
Response to Arguments
Claim Rejections 35 USC 112: Applicant’s argument with respect to the claims rejected under 35 USC 112 is persuasive and rejection of the claims pursuant to 35 USC 112 (for the reasons stated in the previous rejection) is hereby withdrawn. However, new rejections are presented above.
Claim Rejections 35 USC 103: Applicant’s arguments with respect to all claims have been considered but are not persuasive.
Applicant states that the claims require that the first and second panels can be coupled by means of a downward motion of a first panel relative to a second panel. Applicant states that in addition, claim 44 requires that there is no contact between the underside of the downward directed locking element and an upper side of the first lip of the upward directed lower hook-shaped portion, with a distance of at least .05mm therebetween and less than 0.10mm of vertical projection.
First, Applicant argues that Pervan does not disclose coupling by a downward motion. Applicant argues that Pervan repeatedly characterizes connection by angling. Applicant argues that Pervan recognizes “angling” as a turning motion. Applicant contends that the downward motion of the specification is not the same as the angling of Pervan. The Examiner respectfully disagrees. The claim recites in pertinent part, “the second coupling parts are configured so that two such panels can be coupled together … by means of a downward motion.” First, 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 “configured so that two such panels can be coupled together … by means of a downward motion” 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 “coupled together … by means of a downward motion” 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 “together … by means of a downward motion.” Thus, Pervan reads on the claimed limitation.
Second, Applicant argues that Pervan fails to disclose the claimed less than 0.10mm vertical projection of the second contact zone and/or locking-part overlap. The Examiner recognizes that Pervan fails to disclose the second contact zone extending over a distance less than 0.10mm. However, as noted above, 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). Applicant contends that Pervan identifies values much larger than the 0.10mm, but states that the above rationale does not supply a reasoned motivation for such a reduction, and that the claimed dimension is not an isolated, routine optimization. Applicant contends that the claimed dimension cooperates with the downward motion to obtain strong vertical locking. However, these arguments do not preclude obviousness themselves. Modification of the claimed dimensions would lessen the contact area between panels at 13, which would reduce friction and make assembly easier. It is common sense that less contact area provides less friction. It is well-known that less friction simplifies assembly. Therefore, the proposed modification would have been obvious to one having ordinary skill in the art for those reasons.
Third, Applicant contends that the specification lays out reasoning for utilizing the claimed vertical projection dimension. The Examiner appreciates this reasoning. However, the rejection is presented on the features claimed, not the discussion of the specification. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Fourth, with respect to claim 48, Applicant argues there is no reason to modify the second contact zone with the claimed tangent angle. Applicant argues that Pervan teaches the surfaces are plane and parallel, and that there would be no reason to modify to the claimed tangent line. The the test for obviousness is not whether the tangent line may be bodily incorporated into the structure of the Pervan; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). As noted above, 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).
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 KYLE WALRAED-SULLIVAN whose telephone number is (571)272-8838. The examiner can normally be reached Monday - Friday 8:30am - 5:00pm.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
KYLE WALRAED-SULLIVAN
Primary Examiner
Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635
Prosecution Insights