Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
This communication is a first Office Action on the Merits. Claims 21-39, as originally filed 07 JUL. 2026, are pending and have been considered as follows:
Election/Restrictions
Applicant’s election without traverse of “Applicant elects, for purposes of further examination, the Species of JOINT SYSTEM 10e. At least claims 21-39 are readable on the species” in the reply filed on 07 JUL. 26 is acknowledged.
However, the Examiner disagrees with this listing of claims which read upon the elected species. Specifically, the Examiner finds claims “22” does not read upon the elected species: “JOINT SYSTEM 10e”. In claims “22” reference is drawn to a feature(s) (“the male contact surface and the female contact surface are parallel to the first major surface”) that is only disclosed with reference to the non-elected species JOINT SYSTEM 10i FIG. 18a-18b or JOINT SYSTEM 10j FIG. 19a-19b (see “joint system 10i may be viewed as a modification of the joint system 10e” p. 56).
Therefore, claims 22 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
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 21, 23-39 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-16 of U.S. Patent No. US 12139918 B2. 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 patents.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/16/2024 (5ea.) and 06/09/2025 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.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.83 or 1.84 because of the following informalities:
The drawings fail to show the following as described in the specification:
"beveled surface 155" (compare to surface 185, FIG. 21a)
reference character(s) "148" has/have been used to designate both “planar stepped [surface] 148” and “right angle rebate 148”;
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action.
The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 21 objected to because of the following informalities:
Cl. 21 ln. 26: after “between the female” replace “joint” with --planar--
Appropriate correction is required.
Claim Rejections - 35 USC § 102 and § 103
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claim 21, 23-25, 29-32 and 35-39 rejected under 35 U.S.C. 102(e) as being anticipated by Hannig US 8375672 B2.
As per claim 21 Hannig teaches a vertical joint system (see “form-fitting hooked profiles” abstract ln. 3) for a substrate having an opposed major first and second surfaces, the joint system comprising:
non-symmetrical male and female joints extending along opposite sides of the substrate, the male and female joints configured to enable two substrates with like joint systems to engage each other in response to a force applied in an engagement direction which is perpendicular to the major surfaces;
the male joint comprising:
a male protrusion (hook 10 FIG. 4) extending generally perpendicular from the first major surface toward the second major surface and a male recess (recess between 15 and 16, FIGs. 2 and 4) formed inboard of the male protrusion (hook 10 FIG. 4);
a distal male locking surface (surface 12 FIG. 2+4) formed on a side of its male protrusion (hook 10 FIG. 4) most distant from the male recess (recess between 15 and 16, FIGs. 2 and 4), and a proximal male locking surface (recess 16 FIG. 3-4) being a surface common to the male protrusion (hook 10 FIG. 4) and male recess (recess between 15 and 16, FIGs. 2 and 4);
a male planar abutment surface (surface at 12, FIG. 4) extending from and essentially perpendicular to the first major surface;
a male contact surface (interlocking element 13 FIG. 4) between the male joint abutment surface and the distal male locking surface (surface 12 FIG. 2+4);
the female joint comprising:
a female protrusion (hook 9 FIG. 4) extending generally perpendicular from the second major surface toward the first major surface and a female recess formed inboard of the female protrusion (hook 9 FIG. 4);
a proximal female locking surface (upper edge of 25, FIG. 3-4) formed on a side of its female recess most distant from its female protrusion (hook 9 FIG. 4), and a distal female locking surface (interlocking element 18, FIG. 3-4) being a surface common to the female protrusion (hook 9 FIG. 4) and female recess;
a female planar abutment surface (surface at 23 FIG. 3-4) extending from and essentially perpendicular to the first major surface; and
a female contact surface (humps 25, FIG. 3-4) between the female [[joint]] --planar-- abutment surface (surface at 23 FIG. 3-4) and the proximal female locking surface (upper edge of 25, FIG. 3-4),
wherein the locking surfaces are configured so that when a male and female joint of two substrates are engaged, the distal male and proximal female locking surfaces engage to form a locking plane (joint 24, FIG. 4), and the proximal male and distal female locking surfaces engage to form another locking plane (see plane at 16 and 18, FIG. 4),
wherein the locking plane inhibits separation of the engaged joints in a direction parallel to the engagement direction and the another locking plane inhibits separation of the engaged joints in a direction perpendicular to the engagement direction (see FIG. 4; separation would be inhibited at least somewhat), and
wherein the male contact surface (interlocking element 13 FIG. 4) is configured to cooperate with the female contact surface (humps 25, FIG. 3-4) when a male and female joint of two substrates are engaged.
As per claim 23 Hannig teaches the limitations according to claim 21, wherein the female planar abutment surface (surface at 23 FIG. 3-4) is closer to an innermost surface of the female recess than the proximal female locking surface (upper edge of 25, FIG. 3-4) is, in the horizontal direction.
As per claim 24 Hannig teaches the limitations according to claim 21, wherein when the male and female joints are engaged, the respective surfaces of the male contact surface (interlocking element 13 FIG. 4) and female contact surface (humps 25, FIG. 3-4) and of the male and female planar abutment surfaces are in abutment (see FIG. 4).
As per claim 25 Hannig teaches the limitations according to claim 21, wherein when the male and female joints are engaged, the respective surfaces of the proximal male and distal female locking surfaces and configured to create lateral forces between the male and the female planar abutment surfaces and maintaining them in contact thus preventing the creation of a gap between joined panels (see “form-fitting hooked profiles” abstract ln. 3; this is recognized as “preventing the creation of a gap” as broadly claimed; see also “prevents separation” 3:60).
As per claim 29 Hannig teaches the limitations according to claim 21, wherein a void is created on a side of the locking plane by virtue of the non-symmetrical configuration of the male and female joints (see at least one “void” FIG. 4).
As per claim 30 Hannig teaches the limitations according to claim 21, wherein a void is created on a side of the another locking plane by virtue of the non-symmetrical configuration of the male and female joints (see at least one “void” FIG. 4).
As per claim 31 Hannig teaches the limitations according to claim 21, wherein the male and female protrusions and male and female recesses are configured to facilitate self-alignment of two substrates when one of the substrates is joined to another of the substrates (see “facilitate self-alignment” as broadly claimed, FIG. 4).
As per claim 32 Hannig teaches the limitations according to claim 21, wherein the substrate is made from a material selected from the group consisting of solid timber, engineered timber (“derived timber material” 2:2), manufactured wood laminate, bamboo, plastics, and vinyl.
As per claim 35 Hannig teaches the limitations according to claim 21, wherein the locking surfaces are configured so that when the male and female joints of two substrates are engaged, the distal male and proximal female locking surfaces contact one another at at least one contact interface to inhibit separation of the engaged joints in the direction parallel to the engagement direction (see FIG. 4; separation would be inhibited at least somewhat).
As per claim 36 Hannig teaches the limitations according to claim 21, wherein the distal male locking surface (surface 12 FIG. 2+4) is configured to snap (see “configured to snap”, as broadly claimed, FIG. 4) over the proximal female locking surface (upper edge of 25, FIG. 3-4) during locking of the male and female joint of two substrates.
As per claim 37 Hannig teaches the limitations according to claim 21, wherein the male recess (recess between 15 and 16, FIGs. 2 and 4) comprises an opposite locking surface (see opposite locking surfaces, engaged, FIG. 4), which is opposite to the proximal male locking surface (recess 16 FIG. 3-4), and the female protrusion (hook 9 FIG. 4) comprises an opposite locking surface (see opposite locking surfaces, engaged, FIG. 4), which is opposite to the distal female locking surface (interlocking element 18, FIG. 3-4).
As per claim 38 Hannig teaches the limitations according to claim 37, wherein the opposite locking surface of the male recess (recess between 15 and 16, FIGs. 2 and 4) is configured to cooperate (see “configured” —or “capable”— to cooperate, as broadly claimed) with the opposite locking surface of the female protrusion (hook 9 FIG. 4) at a further locking plane.
As per claim 39 Hannig teaches the limitations according to claim 38, wherein the opposite locking surface of the male recess (recess between 15 and 16, FIGs. 2 and 4) and the opposite locking surface of the female protrusion (hook 9 FIG. 4) are configured to cooperate to inhibit separation of the engaged joints in a direction parallel to the engagement direction (see FIG. 4; separation would be inhibited at least somewhat).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 26-28 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Hannig.
As per claim 26-28, Hannig teaches the limitations according to claim 21, but fails to explicitly disclose:
(Cl. 26) wherein the male and female protrusions are configured to enable relative rotation of two engaged substrates by up to 3.deg. while maintaining engagement of the two substrates;
(Cl. 27) the male and female joints are further configured to enable an adjacent engaged substrate to rotate by up to 7.deg. to 10.deg. downward from the first substrate without disengaging or damage; and
(Cl. 28) the male and female protrusions (Pm, Pf) are configured to enable relative rotation of one of the engaged substrates relative to the other by an angle of between 7.deg. to 10.deg. in a direction into a surface of which the substrates are laid while maintaining engagement of the two substrates.
It has been held that: “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1395-97 (2007). “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418, 82, USPQ2d at 1396.
Therefore a person of ordinary skill in the art would teach allowing for a 7-10 degree freedom of movement before becoming unlocked, so it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the assembly by including the allowance for relative rotation as claimed to ensure the panels stay locking during installation.
Claim 33-34 rejected under 35 U.S.C. 103 as being unpatentable over Hannig in view of Bongiovanni US 4075805 A.
As per claim 33-34 the primary reference of Hannig teaches the limitations according to claim 21 but fails to explicitly disclose:
a beveled surface between the first major surface and the male planar abutment surface;
a beveled surface between the first major surface and the female planar abutment surface.
Bongiovanni teaches an edge of a construction member being provided with a bevel, specifically:
a beveled surface (FIG. 3) between the first major surface and the male planar abutment surface;
a beveled surface (FIG. 3) between the first major surface and the female planar abutment surface.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the assembly of Hannig by including a bevel at the upper surface as taught by Bongiovanni in order to accommodate unevenness between the flooring elements due to slight manufacturing intolerances.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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 Monday-Friday 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/Examiner, Art Unit 3635
/JJS/
/ANNA M MOMPER/Supervisory Patent Examiner, Art Unit 3619
Prosecution Insights