DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-3 and 11-17 in the reply filed on 6/8/2026 is acknowledged. The traversal is on the ground(s) that Li discloses a different invention than that claimed because the processes are different. This is not found persuasive because the limitation of the texture being obtained by performing a distribution by a digital distribution machine is ultimately a product-by-process limitation wherein the special technical feature is still taught by Li: namely a textured substrate formed from a thermoplastic polymer and filler wherein the texture would naturally form from an internal portion to the external surface since the aggregate will naturally have an uneven surface through the planar structure. Alternatively, the instant claims do not provide a contribution over the cited prior art in this Office Action and therefore not a special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claims 4-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/8/2026.
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.
Claims 12-15 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 12 recites the limitation “the formulation of a base material…”. It is not clear if this is the same base material as that claimed in claim 1. In the interest of compact prosecution, Examiner assumes that the base material is the same. Clarification is requested. Claim 13 is rejected as being dependent upon claim 12.
Claim 14 recites “The full body textured material according to claim 11, wherein the substrate can be fabricated into a full body textured substrate or a semi-full body textured substrate”. Since claim 1, upon which claim 14 ultimately depends upon, recites the substrate has a full body texture, it is not clear how a “semi-full body textured substrate” would still be a full body textured material” and it is also not clear how an intermediate material would read on the final material as claimed. The interchange between “substrate” and “material” also renders the claim indefinite. Additionally, the term “can be” is unclear and vague as it relates to the structure of the substrate.
Claim 15 recites the limitation “a base layer formed using a recycled material to perform thorough sprinkling and spreading”. It is unclear what scope the term “using a recycled material to perform thorough sprinkling and spreading” is intended to structurally define. The term “perform” is unclear in context with the recycled material. Furthermore, it is unclear what would meet the limitation “thorough” in light of the specification since it is not defined. Clarification is requested.
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.
Claims 1-3 and 11-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bayer et al. (US 20190047246).
Bayer discloses a laminated decorative laminate. Concerning claim 1, Bayer discloses the decorative laminate comprises embossed patterns that extend from an internal texture to the surface, wherein the laminate comprises at least one layer that forms the texture comprising a thermoplastic material and an inorganic filler (FIGS. 1-4, layers A and B; para. 0013-0028 and 0037-0048).
Although Bayer does not disclose the texture being obtained by performing distribution by a digital distribution machine, it is noted that “[E]ven 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 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed texture obtained by performing distribution by a digital distribution machine and given that Bayer meets the requirements of the claimed full body textured substrate, Bayer clearly meet the requirements of present claims 1-3.
With respect to claim 2, the texture is a wood or stone pattern (para. 0041). Regarding claim 3, a pattern layer is disposed on the laminate (FIGS. 3 and 4; layer F). In regards to claim 11, the limitation is a product-by-process limitation for the above reasons, wherein again it is noted that the final laminate is the same as that claimed and has the same claimed texture. Additionally, Bayer discloses at least one pigment can be dispersed with any layer of the laminate (para. 0062). Regarding claim 12, Bayer discloses a range for filler and other additives and as such, meets the limitation of an adjustable composition (para. 0019-0028 and 0062). Examiner notes that claim 1, from which claims 12 and 13 ultimately depends, recites a final structure; as such, the base materials being granular, powdery, flaky, or viscous prior to processing are not given patentable weight since the final product is a textured body which is the same as that disclosed by Bayer.
With respect to claims 14 and 15, a single pigment can be added to only one layer and as such, be considered monochromatic (para. 0062). The laminate as shown is a plank material as shown in the Figures. Examiner notes that the limitations regarding processing an intermediate into a final product are considered product-by-process limitations and since the final structure has the same structure as that claimed, the Bayer reference meets the limitations as claimed. See MPEP 2113. Regarding claims 16 and 17, layer F is a match pattern layer disposed on the substrate that has depressions to match the textures of the substrate (FIG. 3; para. 0051-0062).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PRASHANT J KHATRI whose telephone number is (571)270-3470. The examiner can normally be reached M-F 10AM-6:30PM.
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, Veronica Ewald can be reached at (571) 272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
PRASHANT J. KHATRI
Primary Examiner
Art Unit 1783
/PRASHANT J KHATRI/Primary Examiner, Art Unit 1783
Prosecution Insights