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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “at least by means of” in claim 61.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 47, 51, 52, and 56-61 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.
Regarding claim 47, the claim is vague and therefore the claim is rendered indefinite. It is unclear what the recitations actually mean.
Claims 51, 52, 56, 58, and 61, the recitations “or combinations thereof” included in the Markush group in the claim renders the claim indefinite because the metes and bounds of the claim are unascertainable since it is unclear as to what "combinations thereof” encompasses. Further, the recitation may lead to issues under enablement, since the specification may not support/enable all possible combinations in the claims. Each individual combination of materials is not disclosed in the specification.
Claim 57 recites the limitation "said first material zone" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 59, the recitation “said first material” renders the claim indefinite because it is unclear how “at least a first material zone” can be “more rigid than said first material zone”. How can a material zone be more rigid than itself?
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 42-49, 51-54, and 56-61 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2015/005860 A1 to Pervan.
Regarding claim 42, Pervan discloses a wall or ceiling panel (1a, 1b, 1c, 1d), which comprises a substrate layer (body of 1) and a top layer (Page 2, lines 11-22), said top layer optionally comprising a decoration layer (Page 2, lines 11-22), and a wear layer (Page 2, lines 11-22) provided above said decoration layer, wherein said substrate layer, on at least one pair of opposite edges is provided with mechanical coupling parts (9a, 9b, ends of panels 1a, 1b, Fig.23a-d), and wherein a backing layer (2) is provided onto the surface of the substrate layer opposing the top layer (Fig.23a-d), wherein said backing layer at least partly covers said substrate layer (2, Fig.23c; Fig.24b), and wherein said backing layer at least partly extends beyond one or more of said edges (2, Fig.23c; Fig.24b).
Regarding claim 43, wherein said backing layer at least partly extends beyond two non-opposing edges of said substrate layer (4b, 4d, Fig.24b).
Regarding claim 44, wherein said backing layer at least partly extends beyond at most two edges of said substrate layer (4b, 4d, Fig.24b).
Regarding claim 45, discloses wherein said backing layer at least partly extends beyond at most one edge of said substrate layer (Fig.13c and 13d).
Regarding claim 46, wherein said backing layer extends uninterruptedly along said one or more edges of said substrate layer (4b, 4d, Fig.24b).
Regarding claim 47, wherein at the height of said one or more edges of the substrate layer, beyond which the backing layer extends, the backing layer extends interruptedly along approximately the entire length of said one or more edges of said substrate layer (2, Fig.23c; 4b, 4d, Fig.24b).
Regarding claim 48, wherein said backing layer is positioned off-set with regard to the edges of said substrate layer (4b, 4d, Fig.24b).
Regarding claim 49, wherein said backing layer at least partly extends beyond a first edge of said substrate layer over a first distance (left panel, Fig.23d), and wherein at an opposing second edge of said substrate layer, said backing layer is absent over a second distance (right side panel, Fig.23d), wherein said second distance is at least the same or larger than said first distance (Fig.13d).
Regarding claim 51, wherein said backing layer comprises a material chosen from the group of a woven textile material, a non-woven textile material, a glass fiber cloth, a polymer material, a foamed polymer material, an elastomeric material, a thin metallic or polymeric foil, or combinations thereof (Page 31, lines 5-10).
Regarding claim 52, wherein said backing layer comprises one or more connection regions (any area of 2 is capable of receiving a fastener, specifically the areas which are beneath the openings “6” which receive fasteners), which connection regions are configured for receiving one or more connection elements chosen from the group of nails, screws, staples, or combinations thereof (capable of being placed under 6, Fig.17d; further hole in 6, Fig.25a).
Regarding claim 53, Pervan discloses an assembly of a wall or ceiling panel (1d) and a connection member (6), wherein said wall or ceiling panel comprises a substrate layer (body of 1), and a top layer (Page 2, lines 11-22), said top layer optionally comprising a decoration layer (Page 2, lines 11-22), and a wear layer (Page 2, lines 11-22) provided above said decoration layer, wherein said substrate layer, on at least one pair of opposite edges, is provided with mechanical coupling parts (9a, 9b, edges of 1a, 1b, Fig.23c) wherein said connection member is configured to connect to said mechanical coupling parts on at least one of the edges of said substrate layer (Fig.23c), and is configured to at least partly extend beyond one of the edges of said substrate layer (Fig.23c).
Regarding claim 54, wherein said connection member comprises a panel-side part (10a, 10b) and a wall-side part (7 and 2), wherein said panel-side part is configured to at least partly engage with said mechanical coupling parts on at least one of the edges of said substrate layer (Fig.23c).
Regarding claim 56, wherein said wall-side part comprises at least a first material zone comprising a material chosen from the group of a woven textile material, a non-woven textile material, a glass fiber cloth, a polymer material, a foamed polymer material, an elastomeric material, a thin metallic or polymeric foil, or combinations thereof (Page 31, lines 5-10).
Regarding claim 57, wherein said wall-side part comprises at least a second material zone (7) which at least partly surrounds said first material zone (Fig.23c), wherein said second material zone is more rigid than said first material zone (material of 6 is more rigid than 2).
Regarding claim 58, wherein said wall-side part comprises one or more connection regions (any area capable of being secured to a support; Fig.17d; Fig.25a), which connection regions are configured for receiving one or more connection elements chosen from the group of nails, screws, staples, or combinations thereof.
Regarding claim 59, wherein said wall-side part comprises at least a first material zone (2) and said connection regions (areas of 7) comprise a material which is more rigid than said first material zone (material of 6 is more rigid than 2).
Regarding claim 60, Pervan discloses a connection member (6) for installing wall or ceiling panels, said wall or ceiling panels being provided with at least one profiled edge, said connection member comprising: means for interacting with said profiled edge (10a, 10b), and a connection region (any portion of 7 is capable of receiving a fastener; some embodiments show preformed holes, Fig. 17d and 25a) configured for receiving one or more connection elements, wherein said connection region is flexibly and/or movably mounted with respect to said means for interacting with said profiled edge (the means for interacting (10a, 10b) are bent upwardly from the connection region (7)).
Regarding claim 61, wherein said connection region is flexibly and/or movably mounted at least by a folded material portion; a bendable material portion, hinge portions, or angle portions (tabs 10a and 10b are bent, living hinge).
Claim(s) 60 and 61 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2022/0136255 A1 to Sawada et al.
Regarding claim 60, Sawada et al. disclose a connection member (10) for installing wall or ceiling panels, said wall or ceiling panels being provided with at least one profiled edge, said connection member comprising: means for interacting with said profiled edge (11, 12, Fig.5), and a connection region (17L, 19, 17R) configured for receiving one or more connection elements, wherein said connection region is flexibly (bent from base) mounted with respect to said means for interacting with said profiled edge.
Regarding claim 61, wherein said connection region is flexibly mounted at least by means of a folded material portion; a bendable material portion; hinge portions (bent creating a living hinge).
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.
Claim(s) 50 and 55 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2015/005860 A1 to Pervan.
Regarding claims 50 and 55, Pervan discloses wherein said backing layer/wall side part is formed from cork, foam, rubber, etc. Some of the materials are known to have properties which fall into this range or can be formed to have properties that fall into this range, but Pervan does not specifically disclose the backing layer having a tensile strength of between 5 and 50 MPa and/or a Young's modulus of between 0.01 and 5.00 GPa.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have to have formed the backing layer of Pervan having a specific tensile strength and Young’s modulus so to ensure the backing layer remains flexible but also adds strength and durability to the assembly. The backing layer is also capable of adding damping qualities and padding.
Claim(s) 53, 54 and 57-59 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0136255 A1 to Sawada et al. in view of WO 2015/005860 A1 to Pervan.
Regarding claim 53, Sawada et al. disclose an assembly of a wall or ceiling panel (2) and a connection member (10, Fig.5), wherein said wall or ceiling panel comprises a substrate layer (body of 2), wherein said substrate layer, on at least one pair of opposite edges, is provided with mechanical coupling parts (21, 22, Fig.4) wherein said connection member is configured to connect to said mechanical coupling parts on at least one of the edges of said substrate layer (Fig.4), and is configured to at least partly extend beyond one of the edges of said substrate layer (Fig.4).
Sawada et al. does not specifically disclose a top layer, said top layer optionally comprising a decoration layer, and a wear layer provided above said decoration layer.
Pervan discloses using ceiling or wall panels of varying materials and having top layers, decoration layers, wear layers, etc. ((Page 2, lines 11-22).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have provided the ceiling or floor panel with a top decorated layer and a wear layer so to provide the desired aesthetic appearance and further to protect the panel surface and substrate. Providing aesthetic surfaces and wear layers is notoriously well known in the art and would not yield unexpected results.
Regarding claim 54, Sawada et al. disclose wherein said connection member comprises a panel-side part (11, 12) and a wall-side part (15, 17, Fig.5), wherein said panel-side part is configured to at least partly engage with said mechanical coupling parts on at least one of the edges of said substrate layer (Fig.4).
Regarding claim 57, wherein said wall-side part comprises at least a second material zone (31, Fig.5) which at least partly surrounds said first material zone (17L, 19, 17R), wherein said second material zone is more rigid than said first material zone (first material zone is without holes, therefore the material is less rigid).
Regarding claim 58, wherein said wall-side part comprises one or more connection regions (17L, 19, 17R), which connection regions are configured for receiving one or more connection elements chosen from the group of nails, screws, staples, or combinations thereof (Fig.5).
Regarding claim 59, wherein said wall-side part comprises at least a first material zone and said connection regions (17L, 19, 17R) comprise a material which is more rigid than said first material zone (17L, 19, 17R).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN D KWIECINSKI whose telephone number is (571)272-5160. The examiner can normally be reached Monday - Thursday from 8:30 am to 4:00 pm.
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RDK
/RYAN D KWIECINSKI/Primary Examiner, Art Unit 3635
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