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 Rejections - 35 USC § 112
Claims 14-16 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 claims 14-15, claim 13, from which claim 14 depends, establishes “applying a mineral filler onto said support, wherein the mineral filler comprises stone powder and acrylate and is applied directly onto the support by means of a spatula.” Claim 14 then requires wherein said step of applying the mineral filler involves attaching a prefabricated veneer onto said support. If the mineral filler is applied directly onto the support by means of a spatula, how can applying the mineral filler also involve attaching a prefabricated veneer onto said support? These are two completely different iterations of the mineral filler, clearly described as alternatives in Applicant’s Specification. In the clean copy of the Specification, filed 9/12/24, the first full paragraph on page 4 beginning with “ In a preferred configuration,” states: “In a preferred configuration, the step of applying the mineral filler involves directly applying it onto the support with a spatula and/or attaching, in particular bonding, a prefabricated veneer onto said support. The prefabricated veneer preferably comprises a filler applied to a glass fiber support. So, on the one hand, it is possible to apply a mineral filler onto the support with the aid of a spatula. On the other hand, a prefabricated veneer may be used in addition or as a supplement.” While Applicant does include and/or language, and refers to the veneer as be used “in addition or as a supplement,” the disclosure does not explain how both a spatula applied mineral filler and an attached veneer are used together in a step of applying a mineral filler. Where and how is the veneer bonded to the support if the mineral filler is applied directly on the support with a spatula as required by claim 13? Is the veneer placed over the spatula spread mineral filler layer? Is the veneer attached to an opposing side of the support? The is no disclosure for either of these scenarios in the disclosure, so it is wholly unclear to the Examiner how the requirements of claim 13 and 14 can be accomplished in light of the disclosure. Applicant must point directly to where in the disclosure this possibly of this implementation is taught. It is noted that in the Detailed Description section of the clean copy of the Specification, the first paragraph on page 8 states “As an alternative to directly applying the mineral filler 16 by means of a spatula, provision may be made for a prefabricated veneer including the filler to be provided, i.e. onto which said filler has been applied. This veneer may then be connected to the support, for example, by means of bonding”. In this section of the Specification, the mineral filler is clearly applied to the veneer and then connected to the support, which is contrary to claim 13, which requires the “wherein the mineral filler comprises stone powder and acrylate and is applied directly onto the support by means of a spatula”. There is no disclosure for mineral filler applied directly to the support with a spatula, and also including apply the mineral filler involving a prefabricated veneer attached to the support. Therefore, claim 14 is indefinite. For the rejection, the Because claim 14 is unsupported by the disclosure with respect to the claim language of claim 13, claims 14-15 cannot be interpreted in a reasonable manner by the Examiner. Any reference or combination of preferences satisfy claim 13 will also be considered to tach the limitations of claims 14-15. Claims 14-15 should be canceled or amended in a way so as to not contradict claim 13 and the disclosure.
Regarding claim 16, claim 13, from which claim 16 depends, establishes “applying a mineral filler onto said support, wherein the mineral filler comprises stone powder and acrylate and is applied directly onto the support by means of a spatula.” Claim 16 then requires “wherein the step of applying involves applying a filler comprising stone powder and acrylate.” This language is already established in claim 13 and therefore, claim 16 fails to further limit claim 13, rendering it indefinite.
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.
Claims 13-16, 18-20 and 23-31 are rejected under 35 U.S.C. 103 as being unpatentable over Khoddami (WO 2019/058185 A1) in view of Bixel (2021/0396009).
With respect to claim 13 and 16, Khoddami teaches a manufacturing process for an acoustic panel device (defined by sound absorbing layer include a coated substrate layer – see abstract, [0035]-[0036]) including the steps of: providing a support (defined by substrate layer) made of a sound-absorbing material (see abstract, [0035]-[0036]); applying a mineral filler (defined by aerogel coating, see abstract, [0035]-[0036]) onto said support, wherein the mineral filler comprises stone powder (defined by calcium carbonate filler – [0048]) and acrylate ([0048]) and is applied directly onto the support by means of a spatula ([0050] – note that a “knife” is considered to be functionally equivalent the claimed “spatula”).
Khoddami fails to teach and incorporating a structure into said mineral filler.
Bixel teaches a similar manufacturing process for an acoustic panel device of (Figures 1-2) including the steps of: and incorporating a structure (Figure 9, #530) into a face (520) of the panel, which when combined is defined by the mineral filler layer of Khoddami (see Bixel, [0043]-[0045]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the apparatus of Khoddami, with the apparatus of Bixel so as to provide the acoustic panel/material of Khoddami with a desired visual or aesthetic appeal in the form of design features 530 of Bixel (see Bixel, [0043]-[0045])
Further, the claimed method steps are necessitated by the product structure.
With respect to claims 14-15, it is considered to be obvious that Khoddami as modified teaches wherein said step of applying the mineral filler involves attaching a prefabricated veneer (defined by the mineral filler layer) onto said support, and wherein said prefabricated veneer comprises a filler applied to a glass fiber support in the same way as Applicant’s (see 112b rejection above)
With respect to claim 18, Bixel teaches wherein the step of incorporating the structure involves incorporating a structure into the support; and/or incorporating a structure (530) having a triangular profile (clearly seen in Figures 9).
With respect to claim 19, Bixel teaches wherein the step of incorporating the structure (530) involves incorporating a plurality of oblong recesses (530) that run parallel to one another (clearly seen in Figure 9).
With respect to claim 20, Bixel teaches wherein the recesses (530) have at least partially a triangular profile (clearly seen in Figure 9).
With respect to claim 23, Bixel teaches wherein the support (defined by substrate layer – [0035]-[0036]) is provided in the form of a plastic support ([0050]).
With respect to claim 24, Khoddami and Bixel teach the manufacturing process for an acoustic panel device of claim 23. Khoddami further teaches materials known to be thermoplastic ([0050])
Khoddami and Bixel fails to explicitly teach wherein, the plastic support includes a thermoplastic resin.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide wherein, the plastic support includes a thermoplastic resin, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In this case, selecting a thermoplastic resin for a printed plastic material would have been well known and obvious to one of ordinary skill.
With respect to claim 25, Khoddami and Bixel teach the manufacturing process for an acoustic panel device of claim 24.
Khoddami and Bixel fail to explicitly teach wherein the plastic support includes polyethylene terephthalate or polyethylene terephthalate felt.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide wherein the plastic support includes polyethylene terephthalate or polyethylene terephthalate felt, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In this case, selecting a plastic support including polyethylene terephthalate or polyethylene terephthalate felt would have been well known and obvious to one of ordinary skill.
With respect to claim 26, Eisele teaches wherein the support (defined by substrate layer – [0035]-[0036]) is provided in the form of a sound insulation panel (clearly described in [0035]-[0036]).
With respect to claims 27-28 and 31, Khoddami and Bixel teach the manufacturing process for an acoustic panel device of claim 13. Khoddami as modified further teaches wherein a support (Khoddami, defined by substrate layer – see abstract, [0035]-[0036]) is provided with a non-limiting thickness of 3 mm [0059]; and/or the step of applying the mineral filler (Khoddami, defined by aerogel coating, see abstract, [0035]-[0036]) involves applying the latter with an obvious, but unspecified thickness.
Khoddami and Bixel fail to teach wherein a support is provided with a thickness of between 5 mm and 24 mm, or between 9 mm and 15 mm; and/or the step of applying the mineral filler involves applying the latter with a thickness of between 1 mm and 10 mm, or between 2 mm and 4 mm.
It would have been obvious to one of ordinary skill in the before the effective filing date of the claimed invention to provide wherein a support is provided with a thickness of between 5 mm and 24 mm, or between 9 mm and 15 mm; and/or the step of applying the mineral filler involves applying the latter with a thickness of between 1 mm and 10 mm, or between 2 mm and 4 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233. In this case, altering the size of layer #10 would have been obvious to one of ordinary skill so as to tune the device.
With respect to claim 29, Khoddami as modified teaches an acoustic panel (Khoddami, defined by sound absorbing layer include a coated substrate layer – see abstract, [0035]-[0036]) for dampening sound emissions that includes a support (Khoddami, defined by substrate layer – see abstract, [0035]-[0036]) having a mineral filler (Khoddami, defined by aerogel coating, see abstract, [0035]-[0036]) applied thereon and a structure (Bixel, #503) incorporated into the mineral filler (of Khoddami), said panel being manufactured according to the process of claim 13.
With respect to claim 30, Khoddami as modified teaches method of dampening sound emissions including the step of attaching an acoustic panel as claimed in claim 29 to a wall in an interior (see Bixel, [0016]).
Response to Arguments
Applicant’s arguments with respect to claims 13-16, 18-20 and 23-31 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The Examiner considers the obvious combination of Khoddami and Bixel to teach all of the limitations as claimed by Applicant.
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 JEREMY AUSTIN LUKS whose telephone number is (571)272-2707. The examiner can normally be reached Monday-Friday (9:00-5:00).
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/JEREMY A LUKS/Primary Examiner, Art Unit 2837
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