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 .
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.
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Claims 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,059,103. Although the claims at issue are not identical, they are not patentably distinct from each other because both set of claims include the limitations having a base having a first portion having a first coefficient of friction and a second portion having a second coefficient of friction, the first portion including an etched area, a second portion having an unetched area, wherein the first coefficient of friction of the first portion has a first value when the first portion is wet, the second coefficient of friction of the second portion has a second value when the second portion is wet, and wherein the first value is higher than the second value.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gerhard et al (US Patent Publication 20190208965 herein after Gerhard) in view of Esquivel (US Patent Publication 20120317913) as applied to the claims above and further in view of Grayson (US Patent Publication 20040034922).
Regarding Claim 1, Gerhard shows a method of forming a shower receptor comprising: forming a base (paragraph 35 line 1) having a floor surface configured for a user to stand on (paragraph 35 line 1); and selectively lasering directly into the floor surface to form a first portion (see annotated figure below) having a surface texture with a depth (paragraph 26) and a first coefficient of friction (paragraph 40), wherein, following selective etching, the floor surface includes a second portion (see annotated figure below) that is unetched and has a second coefficient of friction (paragraph 26 line 3); wherein the first coefficient of friction has a first value when the first portion is wet and the second coefficient of friction has a second value, lower than the first value, when the second portion is wet (paragraph 22). Gerhard fails to show forming a polymeric base and selectively etching directly into the floor surface.
Esquivel teaches a grooved tile. The method of forming the tile includes selectively etching directly into the floor surface to form a first portion (paragraph 107). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include a step of etching into the floor surface in order to create a pattern (Esquivel paragraph 107 lines 1-2).
Grayson teaches a shower pan that is made of a polymeric (paragraph 12). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make a shower pan made of acrylic in order to provide a strong waterproof shower pan.
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Regarding Claim 2, Gerhard shows the method of claim 1, wherein the first portion covers a range between 30% and 80% of a surface area of the floor surface (paragraph 26).
Regarding Claim 3, Gerhard shows the method of claim 1, wherein the first portion covers 50% of a surface area of the floor surface (paragraph 26).
Regarding Claim 4, Gerhard shows the method of claim 1, wherein the depth is in a range between 40 microns and 70 microns (paragraph 22).
Regarding Claim 5, Gerhard shows the method of claim 1, wherein the depth is 50 microns (paragraph 22).
Regarding Claim 6, Gerhard shows the method of claim 1, but fails to show wherein forming the shower receptor comprises forming the base from acrylic. Grayson teaches a shower pan that is made of acrylic (paragraph 12). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make a shower pan made of acrylic in order to provide a strong waterproof shower pan.
Reading Claim 7, Gerhard shows the method of claim 1, wherein the second portion defines a smooth gloss surface (paragraph 39).
Regarding Claim 8, Gerhard shows the method of claim 1, wherein the first portion is positioned below the second portion (Fig. 2B; paragraph 22, see annotated figure above).
Regarding Claim 9, Gerhard show the method of claim 1 further comprising: Selectively etching directly into the floor surface to form the first portion (see annotated figure above), the first portion having a first surface texture, a first depth, and the first coefficient of friction (paragraph 63); and selectively etching directly into the floor surface to form a third portion (paragraph 63), the third portion (Fig.5) having a third surface texture, a third depth, and a third coefficient of friction; wherein the third depth is greater than the first depth (located closer to base (1); paragraph 63).
Regarding Claim 10, Gerhard shows the method of claim 9, wherein the first portion defines a first pattern (straight lines, Fig.1) and the third portion defines a second pattern (waves, Fig.1), wherein the first pattern is different from the second pattern (Fig.1).
Regarding Claim 11, Gerhard shows the method of claim 1, wherein selectively etching directly into the floor surface comprises operating a laser (5, 6) to form the first portion (paragraph 63).
Regarding Claim 12, Gerhard shows the method of claim 1, but fails to show wherein selectively etching directly into the floor surface comprises operating a sandblaster to form the first portion. Esquivel teaches a method of selectively etching directly into the floor surface comprises operating a sandblaster to form the first portion (104; paragraph 107 line 6). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include a step of operating a sandblaster to form the first portion in order to create a pattern (Esquivel paragraph 107 lines 1-2).
Regarding Claim 13, Gerhard shows the method of claim 1, but fails to show wherein selectively etching directly into the floor surface comprises applying chemical solution to the floor surface to form the first portion. Esquivel teaches a method of selectively etching directly into the floor surface comprises applying chemical solution to the floor surface to form the first portion (104; paragraph 107). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include a step selectively etching directly into the floor surface comprises applying chemical solution to the floor surface to form the first portion in order to create a pattern (Esquivel paragraph 107 lines 1-2).
Regarding Claim 14, Gerhard shows a method of manufacturing an etched shower base, the method comprising: providing a shower base (1) having a floor surface that is smooth (paragraph 9), wherein the floor surface has a first coefficient of friction (paragraph 9); operating a laser (5) to form a lasered portion of the floor surface and an un lasered portion of the floor surface (paragraph 17), wherein the un lasered portion has the first coefficient of friction (paragraph 9) and wherein the lasered portion has a depth and a second coefficient of friction (paragraph 22); wherein the first coefficient of friction is a first value (paragraph 11) when the floor surface is dry and the second coefficient of friction is a second value when the floor surface is dry (paragraph 22), the second value being greater than the first value (paragraph 22); and wherein the first coefficient of friction is a third value when the floor surface is wet (paragraph 11) and the second coefficient of friction is a fourth value when the floor surface is wet, the fourth value being greater than the second value (paragraph 22). Gerhard fails to show providing a polymeric shower base and selectively etching a portion of the floor surface. Esquivel teaches a grooved tile. The method of forming the tile includes selectively etching directly into the floor surface to form a first portion through a laser (paragraph 107). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include a step of etching into the floor surface in order to create a pattern (Esquivel paragraph 107 lines 1-2).
Grayson teaches a shower pan that is made of a polymeric (paragraph 12). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a shower pan made of a polymeric material in order to provide a strong waterproof shower pan.
Regarding Claim 15, Gerhard shows the method of claim 14, wherein the etched portion covers a range between 30% and 80% of a surface area of the floor surface (paragraph 26).
Regarding Claim 16, Gerhard shows the method of claim 14, wherein the depth of the etched portion is in a range between 40 microns and 70 microns (paragraph 22).
Regarding Claim 17, Gerhard shows a bathing structure comprising: a base (1) having a floor surface (4) configured for a user to stand on, wherein the floor surface includes a first portion (see annotated figure below) having a first coefficient of friction (paragraph 22) and a second portion (see annotated figure below) having a second coefficient of friction (paragraph 11); wherein the first portion is a lasered area of the floor surface that defines a surface texture having a depth in a range between 40 microns and 70 microns (Fig. 2B; paragraph 22); wherein the second portion is an un lasered area of the floor surface (Fig. 2B), the second portion defining a smooth surface and is positioned above the first portion (see annotated figure below); and wherein the first coefficient of friction of the first portion has a first value when the first portion is wet (paragraphs 11, 63), the second coefficient of friction of the second portion has a second value when the second portion is wet (paragraph 63), and wherein the first value is higher than the second value (paragraph 63 lines 10-14). Gerhard fails to show a polymeric base and an etched area.
Esquivel teaches a grooved tile. The method of forming the tile includes selectively etching directly into the floor surface to form a first portion through laser (paragraph 107). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include an etched area in order to create a pattern (Esquivel paragraph 107 lines 1-2).
Grayson teaches a shower pan that is made of a polymeric (paragraph 12). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a shower pan made of a polymeric material in order to provide a strong waterproof shower pan.
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Regarding claim 18, Gerhard shows the bathing structure of claim 17, wherein the first portion covers a range between 30% and 80% of a surface area of the floor surface (paragraph 26).
Regarding Claim 19, Gerhard shows the bathing structure of claim 17, wherein the bathing structure is one of a shower receptor (paragraph 55 lines 1-2).
Regarding Claim 20, Gerhard shows the bathing structure of claim 17, but fails to show wherein the floor surface is made from acrylic. Grayson teaches a polymeric base is made of acrylic (paragraph 12). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make a shower pan made of acrylic in order to provide a strong waterproof shower pan.
Response to Arguments
Applicant's arguments filed 5/4/2026 have been fully considered but they are not persuasive. The arguments in regard to the new limitation have been addressed in the action above.
Conclusion
THIS ACTION IS MADE FINAL. 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 LAUREN ASHLEY CRANE whose telephone number is (571)270-5198. The examiner can normally be reached Mondays & Tuesdays 8 am - 4pm.
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/LAUREN A CRANE/
Primary Examiner, Art Unit 3754
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