Claims 16, and 18-32 are pending in the application. Claims1-15 and 17 have been cancelled. Claims 16, and 18-32 are rejected.
The 112 rejection has been withdrawn in view of the present amendment and response.
Other rejections have been maintained.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 16-30 and 32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2018/0043655 to Fuhr (hereinafter “Fuhr”).
Fuhr discloses a material 100 comprising a stainable melamine layer 120, multiple backing layers 111, and a substrate 110 (figure 11). The melamine layer is formed by saturating a sheet 125 with a melamine resin 124 that contains at least one porosity agent including silica, wax, mica, silane, kaolin clay or any combinations thereof (paragraph 34). The porosity agent does not become fully saturated with the melamine resin, thereby providing routes and pathways for a wood stain to seep through the porosity agent down to ultimately stain the sheet 125 (paragraph 34). The porosity agent renders the melamine layer porous, thereby facilitating the absorption and bonding of the wood stain within the melamine layer. The porosity agent reads on the claimed stain additive. The porosity agent-containing melamine layer reads on the claimed coating agent layer.
Fuhr also teaches that decorative designs are printed on the backing layer that is a sheet of paper or kraft paper being saturated in a phenolic resin (paragraph 60). Alternatively, the backing layer is a decorative paper layer (paragraph 61).
The backing layer reads on the claimed ready-to-use, fully cured decorative surface.
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The melamine layer is partially cured with heat and becomes fully cured until the melamine layer undergoes a final heated pressing step where the melamine layer is pressed together with backing layer and substrate (paragraph 44). The melamine layer is cured by heat.
As to claims 17 and 18, Fuhr discloses that the melamine layer is formed by saturating a sheet 125 with a melamine resin 124 that contains at least one porosity agent including silica, wax, mica, silane, kaolin clay or combinations thereof (paragraph 34). Fuhr also teaches that the porosity agent can be introduced in another thermosetting resin including polyurethane, acrylate resin, or urea resin and each of which corresponding to the claimed lacquer based on an aminoplast (paragraph 43).
As to claim 19, Fuhr discloses that the porosity agent comprises kaolin which naturally occurs in a hydrated form (paragraph 34).
As to claim 20, Fuhr discloses that the melamine layer contains a porosity agent in an amount of 30 to 60% by weight (paragraph 48). This is within the claimed range.
As to claims 21 and 22, Fuhr teaches that the porosity agent can be introduced in another thermosetting resin including polyurethane, acrylate resin, or urea resin and each of which corresponding to the claimed lacquer based on an aminoplast (paragraph 43).
As to claim 23, Fuhr teaches that the formulation for a melamine resin includes 89% by weight of melamine resin, and 7.62% by weight of water (paragraph 39). Hence, the melamine formulation is a water-based material.
As to claim 24, Fuhr teaches that the backing layer is a sheet of paper or kraft paper being saturated in a phenolic resin (paragraph 60). The backing layer is a decorative paper (paragraph 61).
As to claim 25-27, Fuhr teaches that the backing layer is in the form of multiple backing layers (paragraph 60). One of the backing layers is made of paper, plastic material, and natural fibers/synthetic fibers (paragraph 60). This reads on the claimed wood composite or the claimed wood-plastic composite.
As to claims 28 and 29, Fuhr teaches that the porosity agent does not become fully saturated with the melamine resin, thereby providing routes and pathways for a wood stain to seep through the porosity agent down to ultimately stain the sheet 125 (paragraph 34). The melamine layer contains wood stain or color particles suspended in an agent (paragraph 29). The material further includes a finishing coating arranged over the melamine layer and thus over the backing layer (paragraph 55).
As to claim 30, Fuhr discloses a material 100 comprising a stainable melamine layer 120, multiple backing layers 111, and a substrate 110 (figure 11). The backing layer serves as an adhesion promoter between the porous panel product and the melamine layer (paragraph 60). The backing layer reads on the claimed adhesive promoter between the decorative surface and the melamine layer.
As to claim 32, Fuhr teaches that the melamine layer has at least a degree of transparency so that the decorative design is visible or otherwise changes the appearance of the material (paragraph 61).
Claims 30 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Fuhr as applied to claim 1 above, and further in view of US 5,229,217 to Holzer (hereinafter “Holzer”).
Fuhr does not explicitly disclose the material comprising an adhesive promoter between the backing layer and the melamine layer, nor is an adhesive promoter mixed with the melamine layer.
Holzer, however, discloses a decorative laminated panel comprising several layers of core papers impregnated with phenolic resin and a surface layer of overlay paper impregnated with melamine resin wherein the surface layer has an adhesive primer layer of polyvinyl butyral (abstract; and claim 1). The adhesive primer layer is applied to the surface layer by dusting the melamine resin impregnated surface layer with powdery polyvinyl butyral while the resin is still wet and drying it afterwards so that an adhesive primer layer is formed (column 2, lines 50-60). When the powder is applied to wet resin, the powder adheres to the surface while also becoming embedded or partially submerged within the surface layer. The polyvinyl butyral adhesive is thus on and inside the surface layer.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to apply an adhesive primer layer disclosed in Holzer between the melamine layer and the backing layer of Fuhr, motivated by the desire to enhance adhesion strength.
Response to Arguments
Applicant alleges that the claim is not anticipated by Fuhr because Fuhr fails to teach the melamine layer being cured by UV-light, high frequency, electron radiation or heat.
The examiner respectfully disagrees.
The melamine layer is partially cured with heat and becomes fully cured until the melamine layer undergoes a final heated pressing step where the melamine layer is pressed together with backing layer and substrate (paragraph 44). The melamine layer is cured by heat, meeting the claimed requirement.
Accordingly, the rejections based on Fuhr have been maintained.
Claims 16-19, 21-24, 28 and 29 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 7,273,651 to Wilde (hereinafter “Wilde”).
Wilde discloses a crackle finish 10 provided on a wood surface 12 as shown in figure 1.
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The crackle finish 10 is sequentially arranged from top to bottom: a top coat 28, a water-based latex wood filler coat 20, a crackle medium 18, a base coat 16, and a sealer coat 14. The base coat is a latex paint or stain available in several degrees of gloss (column 2, lines 35-35). The base coat is applied to the sealer coat or directly to the wood surface 12 and dried (column 2, lines 30-35). The base coat reads on the claimed ready-to-use, fully cured decorative surface.
The latex wood filler coat comprises acrylic lacquer and stain additive comprising talc, limestone, kaolin, mineral class, calcite and quartz (column 3, lines 15-35). The latex wood filler coat forms raised islands or domains separated by cracks 26, making wood surface 12 appear cracked, and revealing glimpses of underlying base coat 16 (figure 1). The cracks make the wood filler coat porous. The latex wood filler coat is a yellow paste with a specific gravity of 1.71 (column 3, lines 20-25). The yellow paste indicates that the latex wood filler coat would inherently absorb and bond color particles.
Wilde does not explicitly disclose the latex wood filler coat being cured by UV light, high frequency, electron radiation or heat. However, it is a product-by-process limitation not as yet shown to produce a patentably distinct material. The examiner takes the position that the claimed material and the crackle finish of Wilde are identical to or only slightly different than the claimed material prepared by the method set out in the claim, because the claimed material and the crackle finish of Wilde are formed from the same materials, having structural similarity.
The crackle finish 10 is sequentially arranged from top to bottom: a top coat 28, a water-based latex wood filler coat 20, a crackle medium 18, a base coat 16, and a sealer coat 14. The base coat is a latex paint or stain available in several degrees of gloss (column 2, lines 35-35). The base coat is applied to the sealer coat or directly to the wood surface 12 and dried (column 2, lines 30-35). The base coat reads on the claimed ready-to-use, fully cured decorative surface. The latex wood filler coat comprises acrylic lacquer and stain additive comprising talc, limestone, kaolin, mineral class, calcite and quartz (column 3, lines 15-35). The latex wood filler coat forms raised islands or domains separated by cracks 26, making wood surface 12 appear cracked, and revealing glimpses of underlying base coat 16 (figure 1). The cracks make the wood filler coat porous. The latex wood filler coat is a yellow paste with a specific gravity of 1.71 (column 3, lines 20-25). The yellow paste indicates that the latex wood filler coat would inherently absorb and bond color particles.
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or an obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to the applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289,291 (Fed. Cir. 1983). It is noted that if the applicant intends to rely on Examples in the specification or in a submitted Declaration to show non- obviousness, the applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with Wilde.
As to claims 17, 18, 21, and 22, Wilde discloses that the latex wood filler coat comprises acrylic lacquer and stain additive comprising talc, limestone, kaolin, mineral class, calcite and quartz (column 3, lines 15-35).
As to claim 19, Wilde discloses that the stain additive comprises kaolin which naturally occurs in a hydrated form (column 3, lines 15-35).
As to claim 23, Wilde discloses that the latex wood filler coat is a water-based coating material (column 3, lines 5-10).
As to claim 24, Wilde discloses that the crackle finish 10 sequentially comprises from top to bottom: a top coat 28, a water-based latex wood filler coat 20, a crackle medium 18, a base coat 16, and a sealer coat 14. The base coat is a latex paint or stain available in several degrees of gloss (column 2, lines 25-35). The base coat is applied to the sealer coat or directly to the wood surface 12 and dried (column 2, lines 30-35). The base coat reads on the claimed ready-to-use, fully cured decorative surface.
As to claim 28, Wilde discloses that the crackle finish 10 sequentially comprises from top to bottom: a top coat 28, a water-based latex wood filler coat 20, a crackle medium 18, a base coat 16, and a sealer coat 14. The top coat reads on the claimed protective layer.
As to claim 29, Wilde discloses that the wood filler coat contains clay, limestone and baryte (column 3, lines 5-10). Each of these reads on the claimed color particles.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Wilde.
Wilde discloses that the latex wood filler coat comprises an acrylic lacquer, 5-10% by weight magnesium carbonate, 50-70% by weight limestone, 1-5% by weight chlorite, 1-5% by weight kaolin, 1-5% by weight calcite, 5-10% by weight talc, and 0.1-0.99% by weight of quartz (column 3, lines 15-20). The combination of the kaolin, talc and quartz reads on the claimed stain additive and their combined content overlaps the claimed range.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the content of the stain additive will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that the content of the stain additive is critical or provides unexpected results.
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the content of the stain additive in the range instantly claimed, motivated by the desire to optimize crackle finish. This is in line with In re Aller, 105 USPQ 233 which holds discovering the optimum or workable ranges involves only routine skill in the art.
Claims 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Wilde as applied to claim 16 above, further in view of Fuhr.
Wilde does not explicitly disclose the wood surface which is a wood-plastic composite or a wood composite.
Fuhr, however, discloses a material 100 comprising a stainable melamine layer 120, multiple backing layer 111 and a substrate 110 (figure 11). The melamine layer is formed by saturating a sheet 125 with a melamine resin 124 that contains at least one porosity agent including silica, wax, mica, silane, kaolin clay or any combinations thereof (paragraph 34). The porosity agent does not become fully saturated with the melamine resin, thereby providing routes and pathways for a wood stain to seep through the porosity agent down to ultimately stain the sheet 125 (paragraph 34). The porosity agent renders the melamine layer porous, thereby facilitating the absorption and bonding of the wood stain within the melamine layer. The decorative designs are printed on the backing layer (paragraph 61). The substrate is a wood composite comprising a medium density fiberboard (MDF), a high density fiberboard (HDF), or an oriented strand board (OSB) (paragraph 26).
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to motivated by the desire to use a wood composite disclosed in Fuhr for the wood surface disclosed in Wilde because such is one of typical engineered wood products in combination with the finishing coating and Fuhr provides necessary details to practice with Wilde.
Response to Arguments
Applicant alleges that the claim is not anticipated by Wilde because Wilde fails to teach the latex wood filler coat being cured by UV-light, high frequency, electron radiation or heat.
As previously discussed, the curing process performed by UV light, high frequency, electron radiation or heat is a product-by-process limitation not as yet shown to produce a patentably distinct material. The examiner takes the position that the claimed material and the crackle finish of Wilde are identical to or only slightly different than the claimed material prepared by the method set out in the claim, because the claimed material and the crackle finish of Wilde are formed from the same materials, having structural similarity.
The crackle finish 10 is sequentially arranged from top to bottom: a top coat 28, a water-based latex wood filler coat 20, a crackle medium 18, a base coat 16, and a sealer coat 14. The base coat is a latex paint or stain available in several degrees of gloss (column 2, lines 35-35). The base coat is applied to the sealer coat or directly to the wood surface 12 and dried (column 2, lines 30-35). The base coat reads on the claimed ready-to-use, fully cured decorative surface. The latex wood filler coat comprises acrylic lacquer and stain additive comprising talc, limestone, kaolin, mineral class, calcite and quartz (column 3, lines 15-35). The latex wood filler coat forms raised islands or domains separated by cracks 26, making wood surface 12 appear cracked, and revealing glimpses of underlying base coat 16 (figure 1). The cracks make the wood filler coat porous. The latex wood filler coat is a yellow paste with a specific gravity of 1.71 (column 3, lines 20-25). The yellow paste indicates that the latex wood filler coat would inherently absorb and bond color particles.
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or an obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to the applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289,291 (Fed. Cir. 1983). It is noted that if the applicant intends to rely on Examples in the specification or in a submitted Declaration to show non- obviousness, the applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with Wilde.
Applicant further asserts that Wilde does not teach any post-production applications of stain and the product disclosed in Wilde is not suitable to be stained post-production because staining would destroy the two-tone décor.
The examiner respectfully disagrees.
Wilde discloses that the crackle finish 10 is sequentially arranged from top to bottom: a top coat 28, a water-based latex wood filler coat 20, a crackle medium 18, a base coat 16, and a sealer coat 14. The base coat is a latex paint or stain available in several degrees of gloss (column 2, lines 35-35). The base coat is applied to the sealer coat or directly to the wood surface 12 and dried (column 2, lines 30-35). The base coat reads on the claimed ready-to-use, fully cured decorative surface while the latex wood filler coat reads on the claimed coating agent layer.
The latex wood filler coat is already stained (column 3, lines 20-25) so there is no need for any post-production applications of stain.
Accordingly, the rejections based on Wilde have been maintained.
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 Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights