DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. Claim 3 is objected to because of the following informalities:
Claim 3 recites the multilayer material according to claim 1 “is muscovite, phlogopite, synthetic mica types, or a combination thereof” and should appropriately state that “the mica flakes are selected from muscovite, phlogopite, synthetic mica types, or a combination thereof.”
Appropriate correction or clarification is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
3. Claims 1-6 and 8-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,017,445 B2.
Claim 1 of the instant application recite a multilayer material comprising a layer of stone laminated to a layer of reinforcing element wherein each layer comprises a first face and a second face opposite to the first face, and wherein said layer of reinforcing element comprises a mica plate or mica layer, the second face of said layer of stone and the first face of said layer of reinforcing element are laminated together at least by an adhesive layer, said stone having a thickness of at least 1 mm said mica plate or mica layer comprising between 70 wt% and 95 wt% of mica and between 5 wt% and 30 wt% of a binder, said multilayer material not comprising a backing layer made of honeycomb structure. Claims 2-5 recite that the multilayer material has an impact resistance at least 5 times higher than the stone alone for the same thickness, the mica is a muscovite, phlogopite, synthetic mica types, or a combination thereof, the adhesive layer is an epoxy-based adhesive, silicone-based adhesive, polyurethane, cyanoacrylate, polyvinyl acetate, hot melt or polymeric glue, the binder is an epoxy-binder, a polyester-binder, a borosilicate or silicone-binder or a combination thereof. Claims 6 and 7 recite that there is an additional layer laminated to the face of the reinforcing element opposite to the layer of stone and the layer is a sound-insulating layer, a magnetic layer, a light-comprising layer and/or a hook-and-loop fastener, the mica plate or mica layer consists of a superposition of mica papers or of mica sheets impregnated with the binder. Claims 8 and 9 recites that there is a covering element provided with at least one coupling means, said coupling means being provided engaging mutual coupling means for connecting with another covering and the coupling means are chosen amongst notches, a U-shape interlocking element, a straight-shape interlocking element, a male interlocking element, or a female interlocking element. Claims 10 and 11 recite that the stone of said layer of stone is marble, ceramic, travertine, blue stone, limestone, basalt, опух, sandstone, granite, quartzite, slate, agglomerated stones, composite stones or combination thereof and the first face of said layer of stone is coated with a protective coating.
On the other hand, US Patent No. 12,017,445 B2 recites a multilayer material comprising a layer of stone laminated to a layer of reinforcing element wherein each layer comprises a first face and a second face opposite to the first face, and wherein said layer of reinforcing element comprises a mica plate or mica layer, the second face of said layer of stone and the first face of said layer of reinforcing element are laminated together at least by an adhesive layer, said stone having a thickness from 1 mm to 10 mm, and wherein said mica plate or mica layer comprises mica flakes, wherein said multilayer material comprises no backing layer facing the second face of the layer of reinforcing element (equivalent to claim 1 of the instant application and meeting the limitation that the multilayer material does not comprise a backing layer made of honeycomb structure) such that the multilayer material presents an impact resistance at least 5 times higher than the stone alone for the same thickness (equivalent to claim 2 of the instant application) and the mica flakes are selected from muscovite, phlogopite, synthetic mica types, or a combination thereof and wherein said mica plate or mica layer further comprises an epoxy-binder, a polyester-binder, a borosilicate or silicone-binder or a combination thereof (equivalent to claims 3 and 5 of the instant application). Claims 5-7 of US Patent No. 12,017,445 B2 recites that the adhesive layer is a layer of adhesive chosen from the group of epoxy-based adhesive, silicone-based adhesive, polyurethane, cyanoacrylate, polyvinyl acetate, hot melt or polymeric glue (equivalent to claim 4 of the instant application), the multilayer material is shaped to be a standardised covering element having at least one coupling means, said coupling means being provided engaging mutual coupling means for connecting with another covering and chosen amongst notches, a U-shape interlocking element, a straight-shape interlocking element, a male interlocking element, or a female interlocking element (equivalent to claims 8 and 9 of the instant application and meeting the limitations of claim 6). Claims 8 and 9 of US Patent No. 12,017,445 B2 recite that the stone is at least a stone chosen from the group of marble, ceramic, travertine, blue stone, limestone, basalt, onyx, sandstone, granite, quartzite, slate, agglomerated stones, composite stones or a combination thereof and the first face of said layer of stone is coated with a protective coating (equivalent to claims 10 and 11 of the instant application).
The scope of the multilayer material in the patented claims 1-11 and the scope of the claims 1-6 and 8-11 of the instant application overlap and include patented subject matter in the instant claims. Although the claims at issue are not identical, they are not patentably distinct from each other because the entire scope of the reference claims falls within the scope of the instant claims and a patent to the claimed invention would improperly extend the right to exclude granted by the already issued patent. One of ordinary skill in the art would be motivated to prepare and claim the scope of the multilayer material in the issued patent again in the instant application since the scope already patented covers the full scope of the instant claims. As a result, the claims are rejected under obviousness-type double patenting.
4. Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,017,445 B2 in view of Towne et al. (US 3,880,972 A).
Claim 7 of the instant application recites that the mica plate or mica layer consists of a superposition of mica papers or of mica sheets impregnated with the binder and such a limitation is not recited in the claims of U.S. Patent No. 12,017,445 B2.
However, Towne et al. teach that a mica sheet can be formed by using a colloid mixture of ground mica, water, a colloid agent and a resin binder. The resin may be coated on the ground mica prior to the formation of the collodial mixture, or the resin may be applied to the sheet after the sheet has been subjected to vacuum treatment and prior to being pressed. The disclosed micaceous insulating structures are formed from finely divided, highly-flaked mica sheet composites having a resinous binder constituent uniformly incorporated therein to give the mica sheet added strength (See Abstract and Column 1).
Accordingly, it would have been obvious to one having ordinary skill in the art to use a mica sheet formed by finely divided, highly-flaked mica sheet composites having a resinous binder constituent uniformly incorporated in the multilayer material claimed in U.S. Patent No. 12,017,445 B2 given that Towne et al. teach that finely divided, highly-flaked mica sheet composites having a resinous binder constituent uniformly incorporated therein give the mica sheet added strength.
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEEBA AHMED whose telephone number is (571)272-1504. The examiner can normally be reached Monday-Thursday 7am-6pm.
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/SHEEBA AHMED/Primary Examiner, Art Unit 1787