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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-12 in the reply filed on 3/12/2026 is acknowledged. Claims 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/12/2026.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
(A) Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,186,973. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Regarding claim 1 (instant application), claim 1 of the reference application claims exactly the same subject matter except the phrase “a plastic base layer, a printed plastic layer, and a transparent plastic layer” (3 layers) is replaced with “a plastic base layer and a long plastic layer” (2 layers). However, one of ordinary skill in the art would have found it obvious to have provided any number of suitable layers as to have created a product having an appropriate thickness for a given application.
Regarding claims 2-10 (instant application), claims 2-10 of the referenced application claim the same subject matter.
(B) Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,633,905. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Regarding claims 1-3 (instant application), claim 1 of the referenced patent would include all of the limitations of claims 1-3 of this application.
Regarding claims 4-9 (instant application), claim 1 of the referenced patent contains all of these limitations.
Regarding claims 10-12 (instant application), these limitations all appear to be present in claim 1 of the referenced patent. The separate feeding devices are described.
(C) Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,633,904. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Regarding claim 1 (instant application), claim 1 of the referenced patent would include all of the limitations of claim 1 of this application.
Regarding claims 2-9 (instant application), claim 1 of the referenced patent contains all of these limitations.
Regarding claims 10-12 (instant application), these limitations all appear to be present in claim 1 of the referenced patent. The separate feeding devices are described.
Claim Rejections - 35 USC § 103
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 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.
Claims 1 and 3-12 are rejected under 35 U.S.C. 103 as being unpatentable over Comerio (US 2013/0228946) in view of Lensing et al. (US 2018/0117830), hereinafter Lensing.
Regarding claim 1, Comerio discloses a method of manufacturing flooring planks comprising a plastic base layer [substrate (S)], a printed plastic layer [or (F) film], and a transparent plastic layer: (a) providing a decorative material of continuous length by feeding said printed plastic layer, including a layered raw material [“LM” which comprises the (F) film (PVC) (“plastic base layer” / “transparent plastic layer”) and (S) substrate together as two layers, par. 0068, 0089] (Fig. 3) into oppositely rolling rollers (engraved roller 201 – “embossing roller” and counter-cylinder 202 – “backing roller”) (par. 0070); with the transparent plastic layer inherently having a front and back side as shown.
Comerio further discloses that the printed plastic layer or “film” (F) is preprinted with a decoration having continuous unit patterns defined by pitch “A” (par. 0051, 0068; Fig. 5) that are repeating patterns that are connected end to end and which would be defined by an “unstretched length.” Comerio further discloses that the embossing roller (201) has an outer cylinder with an embossed pattern around the cylinder.
Comerio further discloses that there is a stretching step (par. 0092) which stretches or changes the feeding speed (“adjusting a feeding tension” as in the claim) in order to synchronize the printed matter and embossing (par. 0049-0050, 0052-0053; 0088) so that they are “in register” (par. 0045, 0053) with one another as claimed before rolling (par. 0056) or “back in synchrony” which would be “realized during the rolling” inherently as it is placed in-register, immediately prior to the subsequent rolling (par. 0049, 0053-0054). Thus, one of ordinary skill in the art would have had a reason to have specified that the stretched length “matches said length of said embossed pattern” as to have produced an “in-register” image with the embossing. Comerio further discloses a cutting step to produce a panel or plank (par. 0068) which would be done as to produce the desired pattern in order to form the flooring plank.
Comerio does not explicitly disclose that there is a second plastic layer (plastic base layer or transparent plastic layer) included in the now three-layered structure that is rolled as claimed. However, Lensing discloses a similar continuous in-register embossing process (Lensing, abstract) which comprises a multi-layered structure that is joined together and embossed as in Comerio (using embossing roller (7) shown as dashed line in Lensing, Fig. 4).
Comerio discloses a “base” process of forming a layered structure of an embossing in register with a printed pattern. Lensing discloses an “improvement” to the process that has been improved in the same way as the claimed invention in that Lensing includes multiple layers (1, 2) (Lensing, Fig. 4) which are joined together at nip point (6) between rollers (5, 7) (Fig. 4), demonstrating that multi-layered structures can be produced in a similar manner as in Comerio and the products obtained would be substantially similar but for the inclusion of more layers of material in the product.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the process as discussed above to have further specified that more than one plastic layer is supplied by the feeding step into the rollers as claimed in order to produce a multi-layered structure for the material product.
Regarding claims 3-4, Comerio/Lensing discloses the subject matter of claim 1, and further discloses hot rolling the plastic base layer to the back side of the printed plastic layer by a rolling step where the material is rolled and embossed with an embossing roller (at section 200) (Comerio, par. 0070, 0091; Fig. 3).
Regarding claims 5-9, Comerio/Lensing discloses the subject matter of claim 1, and further discloses the repeating units with a pattern shown at the side (Comerio, Fig. 5) corresponding to a “preset part” or “chromatic printing line” where the embossing roller matches the pattern as outlined above, and so it would also match this pattern as required in the claims.
Regarding claim 10, Comerio/Lensing discloses the subject matter of claim 1, and further discloses the separate feeding devices (as shown in Comerio, Fig. 3) for each of the materials.
Regarding claims 11-12, Comerio/Lensing discloses the subject matter of claim 1, and further discloses that the layers are made up of a PVC material, which is thermoplastic (Comerio, par. 0048, 0050, 0068).
Allowable Subject Matter
Regarding claim 2, it appears that this claim contains subject matter that is free of the prior art. However, it is subject to the three non-statutory double patenting rejections above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW D GRAHAM whose telephone number is (469)295-9232. The examiner can normally be reached Monday - Friday 7:30AM-4:00PM (CST).
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, Christina Johnson can be reached at (571) 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW D GRAHAM/Primary Examiner, Art Unit 1742
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