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 .
Election/Restrictions
Applicant's election with traverse of Group I Claims 21-40 in the reply filed on 12/22/2025 is acknowledged. The traversal is on the ground that there is no undue burden in searching or examining the full scope of claims 21-46. This is not found persuasive for the following reason. Since this application is filed under 35 U.S.C. 371, the Election/Restriction is implemented following the Requirement for Unity of Invention under MPEP 1800. Under PCT Rule 13.2, the unity of invention requirement is considered fulfilled when a technical relationship exists among claimed inventions involving one or more of the same or corresponding special technical feature. PCT Rule 13.2 goes on to define a special technical feature is those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over a prior art.
In this case, the Examiner has identified the technical feature as “a composite product comprising: a solid wood component; and a coating layer on at least one side of the solid wood component, wherein the at least one side of the solid wood component has a wood grain, wherein the coating layer comprises at least one thermoplastic polymer and non-spherical pigment particles distributed within the coating layer, and wherein the coating layer has a surface pattern at least partly mimicking the wood grain”. The Examiner also showed that this technical feature is not a special technical feature because it does not make a contribution over the prior art of Hara et al. (JP 2007138697 A). Hara teaches a wood floor material 100 comprising a wood base material 110 having a textured wood base material surface 110b and a glossy paint film 120 on the surface 110b (Fig. 1, Fig. 4, page 13, lines 30-31 and page 2, lines 25-26). Hara teaches the glossy paint film/glitter coating 120 (page 2, line 35) comprises a glitter pigment including aluminum flake pigment (page 3, line 3). The wood floor material 100 meets the claimed composite product, the wood base material 110 meets the claimed solid wood component, the textured wood base material surface 110b meets the claimed wood grain, the glossy paint film 120 meets the claimed coating layer and the aluminum flake pigment meets the claimed non-spherical pigment. See also MPEP 1850 and 1893.03(d). For the above reason, the Requirement for Unity of Invention under PCT Rule 13.2 has been fulfilled.
The requirement is still deemed proper and is therefore made FINAL.
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 26 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.
Claim 26: The claimed solid wood components has wood grain (see claim 1). It is well established that natural wood comprises a natural wood grain. However, it is not clear how a compressed wood comprises a natural wood grain because compressed wood is generally engineered wood, and there is nothing in the specification or in original claims that shows the claimed wood grain is manmade. It is not clear how the claimed compressed solid wood component possesses a natural wood grain.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 21, 23, 28 and 34-37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hara et al. (JP 2007138697 A).
Claim 21: Hara teaches a wood floor material 100 comprising a wood base material 110 having a textured wood base material surface 110b and a glossy paint film 120 on the surface 110b (page 13, lines 30-31; page 2, lines 25-26 and Figs. 1, 2 and 10). Hara teaches the glossy paint film/glitter coating 120 (page 2, line 35) comprises a glitter pigment including aluminum flake pigment (page 3, line 3). The wood floor material 100 meets the claimed composite product, the wood base material 110 meets the claimed solid wood component, the textured wood base material surface 110b meets the claimed wood grain, the glossy paint film 120 meets the claimed coating layer and the aluminum flake pigment meets the claimed non-spherical pigment.
Claim 23: Hara teaches the wood base material 110 comprises a summer eye portion and a winter eye portion. The summer eye portion and winter eye portion meet the claimed earlywood and latewood.
Claim 28: Hara further teaches the glossy paint film/glitter coating film 120 is formed a coating process (page 7, line 30).
Claims 34-37: Hara teaches the glossy paint film/glitter coating 120 (page 2, line 35) comprises a glitter pigment including aluminum flake pigment {instant claims 35-37} (page 3, line 3).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 22, 24 and 29-33 are rejected under 35 U.S.C. 103 as being unpatentable over Hara et al. (JP 2007138697 A).
Hara teaches the claimed invention as set forth above.
Claim 22: Hara teaches textured wood base material surface 110b of the wood floor material 100 comprises concave portions 111 (page 7, line 27 and Figs. 1, 2 and 10). The concave portions 111 meet the claimed wood grain comprising sections with comparatively higher compressibility, i.e., the claimed first sections; and the surface of the wood floor material 100 without the concave portions 111 meets the claimed sections with comparatively lower compressibility, i.e., the claimed second sections. Hara further teaches the glossy paint film/glitter coating film 120 is formed a coating process (page 7, line 30). With respect to the claimed first section of the coating layer, the claimed second section of the coating layer and the claimed orientation of the non-spherical pigment particles, the Office realizes that all of the claimed effects and physical properties are not positively stated by the reference. However, the reference teaches all of the claimed components, and process limitations. Therefore, the claimed effects and physical properties, i.e., the first section of the coating layer, the second section of the coating layer and the orientation of the non-spherical pigment particles would implicitly be achieved by component and composition with all the claimed ingredients. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed components and compositions.
Claim 24: Hara teaches textured wood base material surface 110b of the wood floor material 100 comprises concave portions 111 (page 7, line 27 and Figs. 1, 2 and 10). The concave portions 111 meet the claimed wood grain comprising sections with comparatively higher compressibility, i.e., the claimed first sections; and the surface of the wood floor material 100 without the concave portions 111 meets the claimed sections with comparatively lower compressibility, i.e., the claimed second sections. Hara further teaches the glossy paint film/glitter coating film 120 is formed a coating process (page 7, line 30). With respect to the claimed first section of the coating layer, the claimed second section of the coating layer and the claimed distribution of orientation of the non-spherical pigment particles, the Office realizes that all of the claimed effects and physical properties are not positively stated by the reference. However, the reference teaches all of the claimed components, and process limitations. Therefore, the claimed effects and physical properties, i.e., the first section of the coating layer, the second section of the coating layer and the distribution of orientation of the non-spherical pigment particles would implicitly be achieved by component and composition with all the claimed ingredients. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed components and compositions.
Claims 29-32: With respect to the claimed coating layer thickness, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in the art would have been motivated to adjust the thickness of the coating layer and the motivation would be to control crack resistance, water resistance and abrasion resistance {instant claims 30-32}. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 205 USPQ 215.
Claim 33: With respect to the claimed content of particles, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in the art would have been motivated to adjust the content of the particles in the coating layer and the motivation would be to control concealability and metallic feeling of the coating layer. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 205 USPQ 215.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Hara et al. (JP 2007138697 A) as applied to claim 21 above, and further in view of Belluz et al. (US 2009/0305070 A1).
Hara teaches the claimed invention as set forth above.
Claim 25: Hara does not teach the glossy paint film/glitter coating film 120 is formed on all sides. However, Belluz teaches a wood molding coated with an uncured UV curable coating material applied on all sides followed by a curing process [0027]. Hara and Belluz are analogous art because they are from the same field of endeavor that is the coated wood art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the teaching of Belluz, (i.e., coating the wood on all sides) with the invention of Hara, and the motivation for combining would be, as Belluz suggested, to improve resistance to photodegredation, to improve impact resistance and to improved abrasion resistance and washability [0005].
Claims 26 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Hara et al. (JP 2007138697 A) as applied to claim 21 above, and further in view of Hanlon et al. (US 3,796,586).
Hara teaches the claimed invention as set forth above.
Claim 26: Hara does not teach the wood base material 110 is a compressed wood. However, Hanlon teaches a siding comprising a compressed wood fibers having an uneven, deep embossed surface on one side, a first coating and a second coating (col. 1, lines 11-19). Hara and Hanlon are analogous art because they are from the same field of endeavor that is the coated wood art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the compressed wood of Hanlon with the invention of Hara, and the motivation for combining would be to control cost and environmental sustainability.
Claim 27: The uneven, deep embossed surface side of the compressed wood fibers of Hanlon meets the claimed trimmed side.
Claims 38-39 are rejected under 35 U.S.C. 103 as being unpatentable over Hara et al. (JP 2007138697 A) as applied to claim 21 above, and further in view of Kiljunen et al. (US 2011/0045308 A1).
Hara teaches the claimed invention as set forth above.
Claims 38-39: Hara does not teach the PET, PE or PP as the resin in the glossy paint film/glitter coating film 120. However, Kiljunen teaches a coated wood board comprising a wood board and a coating material on the wood board (abstract), wherein the coating material comprises polyethylene {instant claim 39} [0054]. Hara and Kiljunen are analogous art because they are from the same field of endeavor that is the coated wood art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the polyethylene of Kiljunen with the invention of Hara, and the motivation for combining would be, as Kiljunen suggested, to reduce coast and control hardness/flexibility of the layer [0011].
Claim 40 is rejected under 35 U.S.C. 103 as being unpatentable over Hara et al. (JP 2007138697 A) as applied to claim 21 above, and further in view of Bueker et al. (US 2009/0162502 A1).
Hara teaches the claimed invention as set forth above.
Claim 40: Hara teaches mixing the aluminum flake glitter pigment with other bright pigment (page 3, line 17), but does not teach cellulosic material as the other pigment. However, Bueker teaches use of cellulose fibers as additives in a film-forming coating composition (abstract and [0028]). Hara and Bueker are analogous art because they are from the same field of endeavor that is the coating composition art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the cellulose fibers of Bueker with the invention of Hara, and the motivation for combining would be to reinforce the coating layer.
Correspondence
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BS
March 5, 2026
/BETELHEM SHEWAREGED/
Primary Examiner
Art Unit 1785