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 1-17, as originally filed 13 SEP. 2024 (election 18 JUN. 26), are pending and have been considered as follows:
Election/Restrictions
Applicant’s election without traverse of “Applicant elects SPECIES A, exemplified in Figs. 2-4… without traverse… Claims 1-17 are readable on SPECIES A… Claim 1 is generic… claims 2-8 and 12-17 are at least not clearly limited to only one of the identified species” in the reply filed on 18 JUN. 26 is acknowledged.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 16/625869, filed on 23 DEC. 2019.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 13 SEP. 24 (2 ea.) and 04 MAY 26 was 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.
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 1-17 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of U.S. Patent No. US 11072929 B2 (‘929).
Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations in the present case are contained within the claims of the issued patent ‘929.
Claim Objections
Claim 1-5 and 8 objected to because of the following informalities:
Cl. 1 ln. 11: after “by a front lip and a rear” replace “lips” with --lip--
Cl. 2 ln. 1: after “chloride foil on” replace [[its]] with --a-- and after “front side” insert --thereof--
Cl. 3 ln. 1: after “chloride foil on” replace [[its]] with --a-- and after “rear side” insert --thereof--
Cl. 4 ln. 1: after “lacquer layer on” replace [[the]] with --a-- and after “front side” insert --thereof--
Cl. 5 ln. 1: after “1, wherein” replace [[the]] with --a--
Cl. 8 ln. 2-4: after “free end of the front lip;” replace [[the]] with --an-- and after “partially or entirely beyond” replace [[the]] with --an-- before “open or free end”
Appropriate correction is required.
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 13-14 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. 13 ln. 1 and Cl. 14 ln. 1: the recitation(s) of “or the like” is vague, indefinite, and confusing being unclear which limitations are encompassed by “or the like”.
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, 7-16 rejected under 35 U.S.C. 103 as being unpatentable over Whispell et al. US 8833028 B2 (Whispell) in view of Schwitte et al. US 20060010820 A1 (Schwitte).
As per claim 1 Whispell teaches a wall or ceiling the panel (plank 10, FIG. 5; this is considered exemplary; note “floor covering, wall covering, ceiling, and the like” 11:5), which, on one side edge of the panel (plank 10, FIG. 5; this is considered exemplary; note “floor covering, wall covering, ceiling, and the like” 11:5) comprises a male coupling part (flange 1040, FIG. 6; this is considered exemplary) and, on an opposite side edge of the panel (plank 10, FIG. 5; this is considered exemplary; note “floor covering, wall covering, ceiling, and the like” 11:5), comprises a female coupling part (groove 1020, FIG. 5),
wherein the male coupling part (flange 1040, FIG. 6; this is considered exemplary) and the female coupling part (groove 1020, FIG. 5) are configured such that two of such the panels (plank 10, FIG. 5; this is considered exemplary; note “floor covering, wall covering, ceiling, and the like” 11:5), by means of the male coupling part (flange 1040, FIG. 6; this is considered exemplary) and the female coupling part (groove 1020, FIG. 5), can be coupled to each other in a plane (planks 10, 10’, FIG. 6; this is considered exemplary) and thus a coupled condition (see exemplary FIG. 6) can be realized between the panels (plank 10, FIG. 5; this is considered exemplary; note “floor covering, wall covering, ceiling, and the like” 11:5);
wherein the male coupling part (flange 1040, FIG. 6; this is considered exemplary) comprises a tongue (flange 1040, FIG. 6);
wherein the female coupling part (groove 1020, FIG. 5) comprises a groove (groove 1020, FIG. 5);
wherein the tongue (flange 1040, FIG. 6) and the groove (groove 1020, FIG. 5), in the coupled condition (see exemplary FIG. 6), form a tongue (flange 1040, FIG. 6) and groove (groove 1020, FIG. 5) connection (see tongue and groove connection, FIG. 6), which realizes a mechanical locking between the panels (plank 10, FIG. 5; this is considered exemplary; note “floor covering, wall covering, ceiling, and the like” 11:5) in the direction perpendicular (see “prevent one connected plank from inadvertently disengaging from the adjacent plank under normal use conditions or moving out of place vertically” 8:11) to the plane of the panels (plank 10, FIG. 5; this is considered exemplary; note “floor covering, wall covering, ceiling, and the like” 11:5);
wherein the groove (groove 1020, FIG. 5) is bordered by a front lip (flange 1030 FIG. 10) and a rear [[lips]] --lip-- (interference wall 1044, FIG. 10);
wherein the male coupling part (flange 1040, FIG. 6; this is considered exemplary) and the female coupling part (groove 1020, FIG. 5) each comprise a locking part,
wherein the locking parts, in the coupled condition (see exemplary FIG. 6), realize a mechanical locking between the panels (plank 10, FIG. 5; this is considered exemplary; note “floor covering, wall covering, ceiling, and the like” 11:5) in the direction in the plane of the panels (plank 10, FIG. 5; this is considered exemplary; note “floor covering, wall covering, ceiling, and the like” 11:5) and perpendicular to the coupled side edges;
wherein the panel (plank 10, FIG. 5; this is considered exemplary; note “floor covering, wall covering, ceiling, and the like” 11:5) comprises a, whether or not filled, polyvinyl chloride (“polyvinyl chloride” 32:17) core (see “extruded core” 41:36; also “FIGS. 3 and 4… Base layer 31 comprises at least one base layer, such as three base layers 31A-31C, and a top layer 33” 11:31 ).
Whispell but fails to explicitly disclose:
wherein the panel has a length of at least 2400 mm;
Schwitte teaches such a floor-to-ceiling length panel, specifically:
wherein the panel has a length of least 2400 mm (see "their entire length of 260 cm" [0068]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Whispell by including the length of at least 2400 mm/2.4 m as taught by Schwitte in order to form a full floor-to-ceiling cladding with individual panels joining at only one edge.
As per claim 7 Whispell in view of Schwitte teaches the limitations according to claim 1, and Whispell further discloses wherein the locking part of the male coupling part (flange 1040, FIG. 6; this is considered exemplary) is provided on the rear side of the tongue (flange 1040, FIG. 6); and
wherein the locking part of the female coupling part (groove 1020, FIG. 5) is provided on the front side of the rear lip (interference wall 1044, FIG. 10; see front/rear as claimed, FIG. 6, 9, and 10).
As per claim 8 Whispell in view of Schwitte teaches the limitations according to claim 1, and Whispell further discloses the panel (plank 10, FIG. 5; this is considered exemplary; note “floor covering, wall covering, ceiling, and the like” 11:5) shows one or more of the following characteristics:
the rear lip (interference wall 1044, FIG. 10) extends in distal direction beyond (see 1023, 1044, FIG. 10) the open or free end (1023, FIG. 10) of the front lip (flange 1030 FIG. 10);
[[the]] --an-- active locking zone defined by the locking parts is situated partially or entirely beyond [[the]] --an-- open or free end (1023, FIG. 10) of the front lip (flange 1030 FIG. 10);
the part of the rear lip (interference wall 1044, FIG. 10) which, in distal direction, extends beyond the open or free end (1023, FIG. 10) of the front lip (flange 1030 FIG. 10), is longer than the thickness of the panel (plank 10, FIG. 5; this is considered exemplary; note “floor covering, wall covering, ceiling, and the like” 11:5);
the coupling parts are of the turning type;
the coupling parts are configured such that they, in the coupled condition (see exemplary FIG. 6), fit into each other with pretension; and/or
the coupling parts are realized entirely from the material of the panel (plank 10, FIG. 5; this is considered exemplary; note “floor covering, wall covering, ceiling, and the like” 11:5) (6) and in one part therewith.
As per claim 9 Whispell in view of Schwitte teaches the limitations according to claim 1, and Whispell further discloses wherein the front side of the rear lip (interference wall 1044, FIG. 10) is provided with a stop surface (see inclined inner surface 1044, FIG. 10), through which stop surface (see inclined inner surface 1044, FIG. 10) an attachment element can be provided in the rear lip (interference wall 1044, FIG. 10).
As per claim 10-11 Whispell in view of Schwitte teaches the limitations according to claim 9, and Schwitte further discloses (Cl. 10) wherein the attachment element is a screw (screws 25, FIG. 7); and (Cl. 11) wherein the stop surface is provided with an indication (recesses 27, FIG. 7) in order to indicate where the attachment element can be provided. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Whispell in view of Schwitte by including the recess and screw as taught by Schwitte in order to more securely fasten the elements to the subjacent support structure.
As per claim 12 Whispell in view of Schwitte teaches the limitations according to claim 1, and Whispell further discloses the coupling parts are situated on the long side edges (see “TONGUE” and “GROOVE” FIG. 2) of the panel (plank 10, FIG. 5; this is considered exemplary; note “floor covering, wall covering, ceiling, and the like” 11:5).
As per claim 13 Whispell in view of Schwitte teaches the limitations according to claim 1, and Whispell further discloses wherein the coupling parts are provided with glue or the like such that, in coupled condition (see exemplary FIG. 6) of the panels (plank 10, FIG. 5; this is considered exemplary; note “floor covering, wall covering, ceiling, and the like” 11:5), water penetration in the coupling is counteracted (see “The plank can be water resistant” 30:3; this is recognized as “glue or the like” as broadly claimed).
As per claim 14 Whispell in view of Schwitte teaches the limitations according to claim 13 and Whispell further discloses wherein the glue or the like is provided along the entire side edge of the panel (plank 10, FIG. 5; see “The plank can be water resistant” 30:3; this is recognized as “along the entire side edge” as broadly claimed).
As per claim 15 Whispell in view of Schwitte teaches the limitations according to claim 1 and Schwitte teaches no coupling parts are provided on the short side edges of the panel (“at least two opposite sides” [0012]). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Whispell in view of Schwitte by including the at least two opposite sides as taught by Schwitte in order to improve the sound and heat insulative ability of two jointed panels when installed adjacent like panels.
As per claim 16 Whispell in view of Schwitte teaches the limitations according to claim 1 and Whispell further discloses wherein the front side of the panel (plank 10, FIG. 5; this is considered exemplary; note “floor covering, wall covering, ceiling, and the like” 11:5) is provided with a relief structure (“The top surface of the plank as described earlier can have a textured surface” 41:19).
Claim 2-3 rejected under 35 U.S.C. 103 as being unpatentable over Whispell in view of Schwitte as applied to claim 1 above, and further in view of Focht US 4073991 A.
As per claim 2-3 Whispell in view of Schwitte teaches the limitations according to claim 1, but the combination but fails to explicitly disclose:
(Cl. 2) wherein the panel comprises a polyvinyl chloride foil on [[its]] --a-- front side --thereof--.
(Cl. 3) wherein the panel comprises a polyvinyl chloride foil on [[its]] --a-- rear side --thereof--.
Focht teaches a decorative embossed film-to-foam laminate, the film selectively distributed essentially along the sidewalls and valleys of the embossed pattern, specifically:
(Cl. 2) wherein the panel comprises a polyvinyl chloride foil (“Preferred film materials are… polyvinyl chloride” 3:11) on [[its]] --a-- front side --thereof--; and
(Cl. 3) wherein the panel comprises a polyvinyl chloride foil (“Preferred film materials are… polyvinyl chloride” 3:11) on [[its]] --a-- rear side --thereof--.
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Whispell in view of Schwitte by including the PVC layer as taught by Focht in order to improve the durability of the decorative layer.
Claim 4 rejected under 35 U.S.C. 103 as being unpatentable over Whispell in view of Schwitte as applied to claim 1 above, and further in view of Windmoller US 20080138560 A1
As per claim 4 Whispell in view of Schwitte teaches the limitations according to claim 1, but the combination but fails to explicitly disclose:
wherein the panel has a lacquer layer on [[the]] --a-- front side --thereof--
Windmoller teaches a multilayer soft core laminate have a lacquer layer as claimed, specifically:
wherein the panel has a lacquer layer on [[the]] --a-- front side --thereof--(“a transparent lacquer layer, applied on the finishing layer” Cl. 1)
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Whispell in view of Schwitte by including the transparent lacquer layer as taught by Windmoller in order to highlight the decorative treatment of the panel.
Claim 5-6 rejected under 35 U.S.C. 103 as being unpatentable over Whispell in view of Schwitte as applied to claim 1 above, and further in view of Döhring US 9663951 B2 (Dohring).
As per claim 5-6 Whispell in view of Schwitte teaches the limitations according to claim 1, but the combination fails to explicitly disclose:
(Cl. 5) wherein [[the]] --a-- front side of the panel is provided with a digital print; and
(Cl. 6) wherein the digital print is provided on a primer.
Dohring teaches such a layer, specifically:
(Cl. 5) wherein [[the]] --a-- front side of the panel is provided with a digital print (“The primer layer 72 bases on an aqueous acrylate system and is preferably applied by means of a curtain coating method. After the drying of the primer layer 72 the decor layer 73 is applied by means of digital printing by the use of a polymerizable print color.” 13:48); and
(Cl. 6) wherein the digital print is provided on a primer (“The primer layer 72 bases on an aqueous acrylate system and is preferably applied by means of a curtain coating method. After the drying of the primer layer 72 the decor layer 73 is applied by means of digital printing by the use of a polymerizable print color.” 13:48).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Whispell in view of Schwitte by including the primer layer as taught by Dohring in order to in order to increase the adhesion to the surface.
Claim 17 rejected under 35 U.S.C. 103 as being unpatentable over Whispell in view of Schwitte as applied to claim 1 above, and further in view of Norwood et al.US 9963887 B2 (Norwood).
As per claim 17 Whispell in view of Schwitte teaches the limitations according to claim 1, but the combination fails to explicitly disclose:
the rear side of the panel is provided with a relief structure.
Norwood teaches a pattern on a rear surface to facilitate drainage, specifically:
the rear side of the panel is provided with a relief structure (“drainage elements are raised elements 212 organized on a grid pattern on a back surface 214” 6:32; see also FIG. 2A).
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It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the assembly of Whispell in view of Schwitte by including the rear surface pattern layer as taught by Norwood in order to protect the rear surface of the panel and thereby extend it’s life cycle.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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Dolder US 4056907 A (FIG. 1, above) teaches floor or wall panels wherein, “[i]n the case of a flat roof the joints at the outer forms can be also further covered with a plastic foil in order to obtain the requisite seal ability or sealing of the roof.”
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Han Eddie Eui In US 5816005 A (above) teaches as thin waterproof membrane base of rigid plastic such as PVC,
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Boucke US 20090183457 A1 (above) teaches a connector device, which is arranged on at least two opposing sides
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