DETAILED ACTION
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 .
This non-final Office action is in response to Applicant’s continuing patent application number 18/807,389 filed on 8/16/2024.
Currently, claims 10-29 are pending and examined.
Claims 1-9 have been cancelled.
Specification
The disclosure is objected to because of the following informalities: par. [0001], lines 2-3; after “7,2023” and “2021”; should added -- now U.S Patent No. 12,104,387 --; -- now U.S. Patent No. 11,708,698 --.
Appropriate correction 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.
Claims 10-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,104,387 and over claims 1-20 of U.S. Patent No. 11,708,698. All of structures of the instant are fully encompassed with the patented claims except for the patented claims do not disclose expressly a core comprising fiber cement, magnesium oxide, chalk or tale.
Claims 10-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,104,387 and over claims 1-20 of U.S. Patent No. 11,708,698 in view of U.S. No. 2021/0387436 to Nilsson et al. (‘Nilsson’). All structures of the instant claims are fully encompassed with the patented claims except for the patented claims do not disclose expressly a core comprising fiber cement, magnesium oxide, chalk, tale, ceramic, polymer, or polyurethane. Nilsson discloses building panel 10, including a panel comprises fiber cement or magnesium oxide (see par. [0004] or par. 0060]). In view of Nilsson, it would have been obvious to one with ordinary skill before the effective filing date of the claimed invention to choose different materials for the panel core for the different purpose of utilizing panels.
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) 10-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over US No. 2013/0283720 to Pervan et al. (‘Pervan’) in view of U.S. No. 2021/0387436 to Nilsson et al. (‘Nilsson’).
Re claims 10-15, 17, 18, 20-25, 27, 28: Pervan discloses a panel 1/1’ comprising: a face surface (wherein 1 points to in Fig. 3A) having a first edge 5a and a second edge 5b that extend along a first axis and are spaced by a width along a second axis that is perpendicular to the first axis, and a third edge and a fourth edge that extend along the second axis and are spaced by a length along the first axis; a back surface (near 6) spaced from the face surface along a third axis that is perpendicular to the first and second axes; a first side (wherein 31/32 point to) that extends between the first edge 5a of the face surface and the back surface, wherein the first side comprises a first tongue 10; a second side that extends between the second edge 5b of the face surface and the back surface, wherein the second side comprises a first front leg 31 and a first back leg 32 that cooperate to define a first groove 11 therebetween (Fig. 3B); a third side that extends between the third edge of the face surface and the back surface, wherein the third side comprises a second tongue 70 (Fig. 7A); and a fourth side that extends between the fourth edge of the face surface and the back surface, wherein the fourth side comprises a second front leg (wherein near 71, Fig. 7A) and a second back leg (near 71) that cooperate to define a second groove 71, wherein: at least one of the first tongue 10 or the first back leg has a longitudinal dimension along the first axis that is greater than the length of the face surface (Fig. 3A); or at least one of the second tongue or the second back leg has a longitudinal dimension along the second axis that is greater than the width of the face surface, wherein the first tongue 10 extends away from the first edge 5a of the face surface by a select distance along the second axis, and wherein the second back leg 32 extends beyond the first edge 5a of the face surface in a direction away from the second edge of the face surface by the select distance (Figs. 3A-3B); wherein at least one of the first tongue 10 or the first back leg has a longitudinal dimension along the first axis that is greater than the length of the face surface (see Fig. 3A), and at least one of the second tongue 70 or the second back leg has a longitudinal dimension along the second axis that is less than the width of the face surface (Fig. 7A); wherein the first tongue 10 has a forward surface and a rear surface, wherein the second tongue 70 has a forward surface and a rear surface, wherein the rear surface of the second tongue 70 is spaced from the rear surface of the first tongue 10 along the third axis by a tab thickness (wherein 8 points to) in a direction toward the face surface, wherein each of the first back leg 32 and the second back leg has a forward surface (near 11) and a rear surface (near 6), and wherein the forward surface of the second back leg is spaced from the forward surface of the first back leg along the third axis by the tab thickness (wherein 8 points to in Fig. 3A) in a direction toward the face surface. Pervan discloses basic structures of the claimed invention as stated but does no disclose expressly a core comprising fiber cement, magnesium oxide, chalk, tale, mineral based, ceramic, polymer, polypropylene or polyurethane. Nilsson discloses building panel 10, including a panel comprises fiber cement or magnesium oxide (see par. [0004] or par. 0060]), mineral based (par. [0015]), ceramic (par. [0095]), polymer, polypropylene or polyurethane (par. [0043]). In view of Nilsson, it would have been obvious to one with ordinary skill before the effective filing date of the claimed invention to choose different materials for the panel core for the different purposes of utilizing panels.
Note: a preamble “A unitary panel” is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
Re claims 16, 26: Pervan discloses wherein the face structure comprises a decorative layer and a coating disposed thereon (par. [0042]).
Re claims 19 and 29: Pervan in view of Nilsson disclose basic structures for the claimed invention as stated above but does not disclose expressly wherein the tab thickness is between 0.2 mm and 5 mm. However, it would have been obvious to one with ordinary skill before the effective filing date of the claimed invention to have a desirable size for thickness in order to facilitate a flooring assembly and economic purposes.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (see attached PTO-892).
Contact Information
Any inquiry concerning this communication or earlier communication from the examiner should be directed to CHI Q. NGUYEN whose telephone number is (571) 272-6847. The examiner can normally be reached on Monday-Friday from 7AM-5PM or email: chi.nguyen@uspto.gov. If attempt to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Brian Mattei can be reached at (571) 270-3238. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pairdirect.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at (866) 217-9197.
/CHI Q NGUYEN/
Primary Examiner, Art Unit 3635
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