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 .
DETAILED CORRESPONDENCE
This communication is a first Office Action on the Merits. Claims 1-15, as originally filed 11 SEP. 2024, are pending and have been considered as follows:
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Election/Restrictions
Applicant’s election without traverse of “SPECIES A, drawn to a panel with a homogenous substrate as shown in FIG. 2… without traverse…1-15 are readable on…” in the reply filed on 16 JUN. 26 is acknowledged.
However, the Examiner disagrees with this listing of claims which read upon the elected species. Specifically, the Examiner finds claims 13 does not read upon the elected species “SPECIES A… FIG. 2”.
In claims 13 reference is drawn to a feature(s)(see “separate insert” Cl. 13, ln. 2) which is only disclosed with reference to the non-elected species (“SPECIES H…. FIG. 16” and “SPECIES I… FIG. 17”).
Therefore, claim 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 24 SEP. 24 (2ea.),
28 APR. 25, and 1 JUL. 26 was/were filed and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Due to the large submission, although the Examiner has identified the statement as having been considered and placed the statement in the file, Applicant is encouraged to identify any particularly relevant references and their relation to the instant invention for specific consideration.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.83 or 1.84 because of the following informalities:
The drawings must show every feature of the invention specified in the claims, therefore the following must be shown or the feature(s) canceled from the claim(s):
Cl. 3: “expansion spaces are provided in said floor covering” has not been explicitly pointed out
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action.
The objection to the drawings will not be held in abeyance.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1-15 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-23 of U.S. Patent No. US 12442196 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the features defined by the non-identical claim language would each be obvious to one of ordinary skill in the art when constructing the invention disclosed in US 12442196 B2.
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 1-12 and 14-15 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 pre-AIA the applicant regards as the invention.
Cl. 1 ln. 2-4: after “a pair of long edges… short edges… substrate… filler” the recitation(s) of “a decor provided thereon” is vague, indefinite, and confusing as being unclear which one —or which multiple— of the previously introduced elements is being referred to by the use of the word “thereon”.
For examination purposes, the Examiner will consider this phrase to mean the décor is generally provided for on the floor panel.
Claims 2-12 and 14-15 though not particularly referenced in this section are nonetheless rejected as being dependent upon an indefinite claim.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 1, 4, 6-12, and 14-15 rejected under 35 U.S.C. 103 as being unpatentable over Braun US 9482004 B2, in view of Lombaert et al. US 10392813 B2 (Lombaert), Cappelle US 10337191 B2, and Pervan US 10328680 B2.
As per claim 1 the primary reference of Braun teaches a method for installing a floor covering comprising a plurality of similar floor panels,
wherein said floor panels are of a shape comprising edges (see “any panel-shaped material” 3:54),
a decor (surface coating 26, FIG. 2) provided thereon,
as well as, on said pair of long edges, coupling parts in the form of a tongue and groove connection (see "profiling of the side edges to connect to other panels. Tongue and groove profiles can be used as the profiles. It is however preferable to use clicking, pivoting or pushbutton profiles that make it particularly easy to lay the panels to form a surface" 12:60), at least partially realized from said substrate (see “When creating the profiles (for example by milling), the foam is also cut” 12:65; this is recognized as “at least partially…” as broadly claimed) and allowing to effect a mechanical locking between two of such floor panels by means of a turning movement (see “pivoting” 12:63), and,
on said pair of short edges, coupling parts in the form of hook-shaped parts (see "profiling of the side edges to connect to other panels. Tongue and groove profiles can be used as the profiles. It is however preferable to use clicking, pivoting or pushbutton profiles that make it particularly easy to lay the panels to form a surface" 12:60) allowing to effect a mechanical locking between two of such floor panel by means of a substantially linear movement perpendicular to the plane of the coupled floor panels with the occurrence of a snap action (“clicking” 12:63),
and
a turning movement (see “pivoting” 12:63;
wherein said substrate comprises a rigid part formed by one or more rigid substrate layers (see “The sound energy propagates particularly well therein and it is not, or is only partially, transmitted into the base panel” 12:32; this is recognized as “rigid” as broadly claimed),
wherein said thermoplastic material is chosen from the list consisting of PVC, polypropylene (“polypropylene (PP)” 6:22) , polyester and PET;
Braun fails to explicitly disclose:
rectangular and oblong shape comprising a pair of long edges and a pair of short edges
wherein said floor panels comprise a substrate comprising thermoplastic material and at least 45 percent by weight of inorganic or mineral filler, and
the sum of thicknesses of said one or more rigid substrate layers being at least 2 mm ,
wherein said groove is limited by an upper lip and a lower lip,
wherein said tongue and groove connection further comprises locking elements including a protrusion at the lower side of said tongue and a recess in the upper side of said lower lip, which, in a coupled condition, counteract the moving apart of the tongue and the groove in the horizontal direction,
wherein said upper lip, said lower lip, the center line through said tongue and the most inwardly located point of said groove all being at least partially realized from said rigid part
said method comprising: providing a first row of installed floor panels;
installing a first floor panel in an adjacent second row;
coupling a second floor panel in said second row by coupling this second floor panel with one of its long edges by means of a turning movement
to the long edge of a floor panel in said first row, and by coupling this second floor panel with one of its short edges, in one and the same turning movement, to a short edge of said first floor panel;
wherein said floor panels have an overall thickness between 3.5 and 8 mm,
the rigid substrate forming at least 65% of the thickness of the floor panels, and Pervan teaches a thickness as claimed, specifically:
a thickness of said rigid substrate layer is at least 65% of an overall thickness of said panel.
Lombaert teaches the chemical compositions as claimed, specifically:
rectangular and oblong shape comprising a pair of long edges and a pair of short edges (“rectangular shape” 9:34)
wherein said floor panels comprise a substrate comprising thermoplastic material and at least 45 percent by weight (“20-75 wt. % fillers” Cl. 1) of inorganic or mineral filler, and
the sum of thicknesses of said one or more rigid substrate layers being at least 2 mm ((“thickness comprised between 4.0 mm and 10.0 mm” 7:40),
wherein said groove is limited by an upper lip and a lower lip (see FIG. 2),
wherein said tongue (protrusion 3, FIG. 2) and groove (recess 5, FIG. 2) connection further comprises locking elements including a protrusion (see “protrusion” at 4, left side, FIG. 2) at the lower side of said tongue (protrusion 3, FIG. 2) and a recess (recess 6, FIG. 2) in the upper side of said lower lip, which, in a coupled condition, counteract the moving apart of the tongue (protrusion 3, FIG. 2) and the groove (recess 5, FIG. 2) in the horizontal direction,
wherein said upper lip, said lower lip, the center line through said tongue (protrusion 3, FIG. 2) and the most inwardly located point of said groove (recess 5, FIG. 2) all being at least partially realized from said rigid part .
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Braun by including the shapes and thicknesses as taught by Lombaert in order to provide a panel having desired strength to weight ratio.
Cappelle teaches such installation as claimed, specifically:
said method comprising: providing a first row of installed floor panels (“coupled at one of its long sides” 13:65);
installing a first floor panel in an adjacent second row (“a preceding row, whereas the floor panel 1A simultaneously, i.e. with the same turning movement W, is coupled on one of its short sides to a floor panel 1B from the same row” 13:65-14:3);
coupling a second floor panel in said second row by coupling this second floor panel with one of its long edges by means of a turning movement
to the long edge of a floor panel in said first row, and by coupling this second floor panel with one of its short edges, in one and the same turning movement (see “pivoting” 12:63), to a short edge of said first floor panel;
wherein said floor panels have an overall thickness between 3.5 and 8 mm (“thickness of the floor panel preferably is smaller than 6 mm”),
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Braun in view of Lombaert by including the coupling by pivoting as described by Cappelle in order to ensure a tight fit between panels.
Pervan teaches the composition and sizes as claimed, specifically:
the rigid substrate forming at least 65% of the thickness of the floor panels (see “majority…core of 6-12mm…0.2 mm thick upper… 0.1-0.2 mm thick lower” 1:40-45);
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Braun in view of Lombaert and Cappelle by substituting the ratio of the core to the entire panel as taught by Pervan in order to use an old and well-known production method of Direct Pressed Laminate (DPL) which produces panels having this known ratio.
As per claim 4 Braun in view of Lombaert, Cappelle and Pervan teaches the limitations according to claim 1, and Lombaert further discloses a first zone where the upper side of said tongue (protrusion 3, FIG. 2) cooperates with the lower side of said upper lip and a second zone where the locking elements cooperate are situated in said rigid part (see “mechanical connection means for a locking or fixation of both constituting panels, both in the vertical direction… and in the horizontal direction” 5:55; see also FIG. 3). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Braun in view of Lombaert, Cappelle and Pervan by including the shape and disposition of the locking elements as taught by Lombaert in order to resist separation.
As per claim 6-7 Braun in view of Lombaert, Cappelle and Pervan teaches the limitations according to claim 1, and Lombaert further discloses said hook-shaped parts comprise
an upward-directed hook-shaped locking part (recess 6, FIG. 2) with a first lip and an upward-directed locking element (see upward directed outer element, bottom right, FIG. 2), and
a downward-directed hook-shaped part (see “downward-directed hook-shaped part” at 4, left side, FIG. 2) with a second lip and a downward-directed locking element (see upward directed outer element, bottom left, FIG. 2), which locking elements, in a coupled condition of two of such floor panels, counteract the moving apart of the hook-shaped parts (see FIG. 3; this would “counteract the moving apart” at least somewhat) in the horizontal direction; and said first lip and said second lip are at least partially realized from said rigid part (see FIG. 2). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Braun in view of Lombaert, Cappelle and Pervan by forming the locking elements as taught by Lombaert in order to form a stronger locking interaction because a larger part of the panel would require dislocation.
As per claim 8 Braun in view of Lombaert, Cappelle and Pervan teaches the limitations according to claim 7, and Lombaert further discloses a third zone where the upward-directed locking element cooperates with the downward-directed locking element in order to effect said horizontal locking is situated at least partially in said rigid part (see FIG. 3). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Braun in view of Lombaert, Cappelle and Pervan by forming the locking elements as taught by Lombaert in order to form a third zone in the rigid section because doing so would provide the strongest force against separation.
As per claim 9 Braun in view of Lombaert, Cappelle and Pervan teaches the limitations according to claim 1, and Lombaert further discloses in said coupled condition a space (see small spaces FIG. 3; compare elements in FIG. 2) is present between the bottom of said tongue (protrusion 3, FIG. 2) and the upper side of said lower lip (lower right side, FIG. 2). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Braun in view of Lombaert, Cappelle and Pervan by including the small space as taught by Lombaert in order to allow the chosen material to expand and contract with environmental changes
As per claim 10 Braun in view of Lombaert, Cappelle and Pervan teaches the limitations according to claim 1 and Lombaert further discloses wherein in said coupled condition a flat contact (see “flat contact“ EXRFIG. 3, below) is formed between the bottom of said tongue and the upper side of said lower lip. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Braun in view of Lombaert, Cappelle and Pervan by including the flat contact as taught by Lombaert in order create a strong and stable connection.
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As per claim 11 Braun in view of Lombaert, Cappelle and Pervan teaches the limitations according to claim 1, and Lombaert further discloses the upper side of said floor panels comprises a bevel on one more of said edges (see “bevel” at diagonal edges, FIG. 3). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Braun in view of Lombaert, Cappelle and Pervan by including the bevel as taught by Lombaert in order Lombaert in order to facilitate easier alignment and fitting during installation of the panels.
As per claim 12 Braun in view of Lombaert, Cappelle and Pervan teaches the limitations according to claim 1, and Lombaert further discloses said floor panels have a modulus of elasticity of at least 2000 N per square millimeter (“Young's modulus… greater than 40 GPa” 7:39). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Braun in view of Lombaert, Cappelle and Pervan by including the modulus of elasticity as taught by as taught by Lombaert in order to support increased weight placed thereon.
As per claim 14 Braun in view of Lombaert, Cappelle and Pervan teaches the limitations according to claim 1, and Lombaert further discloses hook-shaped parts comprise vertically active locking elements (see “fixation… vertical direction” 5:65) that are realized from the material of said rigid part (see FIG. 2). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Braun in view of Lombaert, Cappelle and Pervan by forming the locking elements as taught by Lombaert in order to form a stronger locking interaction which resists panel uplift.
As per claim 15 Braun in view of Lombaert, Cappelle and Pervan teaches the limitations according to claim 1, and Lombaert further discloses said one or more rigid substrate layers are layers of at least PVC and fillers with less than 10 phr of plasticizer ("PVC… plasticizers are comprised between 0 and 5% by weight” 8:66-9:1). It would have been obvious to one of ordinary skill in before the effective filing date to modify the assembly of Braun in view of Lombaert, Cappelle and Pervan by including the plasticizers as taught by Lombaert in order to achieve a panel having desired strength to weight ratio.
Claim 2 rejected under 35 U.S.C. 103 as being unpatentable over Braun in view of Lombaert, Cappelle, and Pervan as applied to claim 1 above, and further in view of Meersseman et al. US 8925275 B2 (Meersseman).
As per claim 2 Braun in view of Lombaert, Cappelle and Pervan teaches the limitations according to claim 1, but the combination but fails to explicitly disclose:
wherein said floor covering is a waterproof floor covering.
Meersseman teaches “said substrate, at least at one of said edges, is waterproof”.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Braun in view of Lombaert, Cappelle and Pervan by including the ability of the floor to be waterproof as taught by Meersseman in order to preserve the life of the assembly.
Claim 3 rejected under 35 U.S.C. 103 as being unpatentable over Braun in view of Lombaert, Cappelle, and Pervan as applied to claim 1 above, and further in view of Magnusson US 20060070325 A1.
As per claim 3 Braun in view of Lombaert, Cappelle and Pervan teaches the limitations according to claim 1, but the combination but fails to explicitly disclose:
expansion spaces are provided in said floor covering.
Magnusson teaches such a space, specifically:
expansion spaces are provided in said floor covering (see “ disposed opposite the middle layer 14. A notch or recess 24 is formed on one side of the base portion 21 adjacent the upper layer 12 to facilitate the engagement of the tongue 18 within the groove 20 and to allow a certain amount of expansion” [0034]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Braun in view of Lombaert, Cappelle and Pervan by including the spaces as taught by Magnusson in order to accommodate for flexion between the floor panels.
Claim 5 rejected under 35 U.S.C. 103 as being unpatentable over Braun in view of Lombaert, Cappelle, and Pervan as applied to claim 1 above, and further in view of Segaert US 20190032342.
As per claim 5 Braun in view of Lombaert, Cappelle and Pervan teaches the limitations according to claim 1, but the combination but fails to explicitly disclose:
wherein said rigid part of the substrate is formed by a single rigid substrate layer.
Segaert teaches a single layer, specifically:
wherein said rigid part of the substrate is formed by a single rigid substrate layer (see “substrate 6 comprises a single layer 8 which is realized on the basis of a composition as described herein above. Here, the composition more particularly comprises PET, a thermoplastic elastomer” [0106]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Braun in view of Lombaert, Cappelle, and Pervan by modifying the layers into a single layer as taught by Segaert in order to streamline manufacturing.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH J SADLON whose telephone number is (571)270-5730. The examiner can normally be reached on M-F 8AM-5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BRIAN D MATTEI can be reached on (571)270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JJS/
/ANNA M MOMPER/Supervisory Patent Examiner, Art Unit 3619
Prosecution Insights