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 § 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.
Claims 1, 4, 5, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Lin 5,612,111 in view of Paillot 2020/0198304.
Regarding claim 1, Lin discloses a board (Fig 4) configured to or capable of forming one or more portions of a product holder system, the board (Fig 4) comprising:
a first exterior polyvinyl chloride (PVC) layer (Fig 1, #1);
a second exterior PVC layer (Fig 1, #2); and
an interior foam layer (Fig 1, #3) having a first surface (top surface) and a second surface (bottom surface) opposite from the first surface (top surface), wherein the first PVC layer (Fig 1, #1) is coupled to the first surface (top surface of #3), and wherein the second PVC layer (Fig 1, #2) is coupled to the second surface (bottom surface of #3).
Lin has been discussed above but does not explicitly teach wherein the first PVC layer is adhesively secured to the first surface, and wherein the second PVC layer is adhesive secured to the second surface.
Paillot discloses a board (Fig 4) comprising a first exterior layer (Fig 4, #2), a second exterior layer (Fig 4, #3), and an interior layer (Fig 4, #5) having a first surface (top surface) and a second surface (bottom surface), wherein the first layer (Fig 4, #2) is adhesively secured to the first surface (top surface of #5), and wherein the second layer (Fig 4, #3) is adhesive secured to the second surface (bottom surface of #5) (as shown in Fig 4) [0071].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adhesively attach the first exterior polyvinyl chloride (PVC) layer (Lin Fig 1, #1) of Lin to the first surface (top surface) of the interior foam layer (Lin, Fig 1, #3) of Lin and attach the second exterior PVC layer (Lin, Fig 1, #2) of Lin to the second surface (bottom surface) of the interior foam layer (Lin, Fig 1, #3) of Lin using the teachings of Paillot in order to further secure the connection between the first exterior polyvinyl chloride (PVC) layer (Lin Fig 1, #1) of Lin, the interior foam layer (Lin, Fig 1, #3) of Lin and the second exterior PVC layer (Lin, Fig 1, #2) of Lin. Further, the substitution of one known connection means for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Regarding claim 4, modified Lin discloses the board (Fig 4) , wherein the board (Fig 4) is configured to or capable of being cut, sized, shaped, and folded to form the one or more portions of the product holder system.
Regarding claim 5, modified Lin discloses the board (Fig 4), wherein the board (Fig 4) is configured to or capable of being cut, sized, shaped, and folded without being heated.
Regarding claim 19, modified Lin discloses a product holder system (Fig 4) comprising:
one or more shelves (one shelf) (Fig 4) formed by one or more boards (one board) (Fig 4) (the board Fig 4 of Lin is capable of being used as a shelf), wherein the one or more boards (Fig 4) include:
a first exterior polyvinyl chloride (PVC) layer (Fig 1, #1);
a second exterior PVC layer (Fig 1, #2); and
an interior foam layer (Fig 1, #3) having a first surface (top surface) and a second surface (bottom surface) opposite from the first surface (top surface), wherein the first PVC layer (top surface) is coupled to the first surface (top surface of #3), and wherein
the second PVC layer (Fig 1, #2) is coupled to the second surface (bottom surface of #3).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Lin 5,612,111 and Paillot 2020/0198304 and further in view of Kim 2020/0095776.
Regarding claim 7, Lin has been discussed above but does not explicitly teach wherein one or both of the first exterior PVC layer or the second exterior PVC layer includes one or both of text or graphics printed thereon.
Kim discloses a multiple layered board (Figs 1 & 2, #1) comprising a first exterior layer (Figs 1 & 2, #20) includes one or both of text or graphics (Figs 1 & 2, #21) printed thereon.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add graphics (Kim, Figs 1 & 2, #21) to the
first exterior PVC layer (Lin, Fig 1, #1) of Lin in order to make the board (Lin, Fig 1) of Lin more aesthetically appealing.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Lin 5,612,111 and Paillot 2020/0198304 and further in view of Marciello 2018/0330219.
Regarding claim 9, Lin has been discussed above but does not explicitly teach the board further comprising a near field communication device secured to the interior foam layer.
Marciello discloses a foam board layer (Figs 1 & 2) comprising a near field communication device (RFID tag, shown in Fig 2) secured to the foam layer (as shown in Fig 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add a RFID tag to the interior foam layer (Lin, Fig 1, #3) of Lin as taught by Marciello in order to store identifying information that remains associated with the boards and that can be read even after installation of the boards (Marciello, Abstract).
Claims 1, 3-6, 19, 21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Cheng 2020/0055289 in view of Lin 5,612,111 and Paillot 2020/0198304.
Regarding claim 1, Cheng discloses a board (Fig 1) configured to or capable of forming one or more portions of a product holder system, the board (Fig 1) comprising:
a first exterior polyvinyl chloride (PVC) layer (Fig 1, #1A) or (Fig 1, #1A & #2A);
and a foam layer (Fig 1, #3A) [0018] [0020] having a first surface (top surface) and a second surface (bottom surface) opposite from the first surface, wherein the first PVC layer Fig 1, #1A) or (Fig 1, #1A & #2A) is coupled to the first surface (top surface of #3).
Cheng has been discussed above but does not explicitly teach wherein the board comprises a second exterior PVC layer; wherein the foam layer is an interior foam layer; wherein the first PVC layer is adhesively secured to the first surface of the interior foam layer, and wherein the second PVC layer is adhesively secured to the second surface of the interior foam layer.
Lin discloses a board (Fig 4) configured to or capable of forming one or more portions of a product holder system, the board (Fig 4) comprising:
a first exterior polyvinyl chloride (PVC) layer (Fig 1, #1) ;
a second exterior PVC layer (Fig 1, #2); and
an interior foam layer (Fig 1, #3) having a first surface (top surface) and a second surface (bottom surface) opposite from the first surface (top surface), wherein the first PVC layer (Fig 1, #1) is coupled to the first surface (top surface of #3), and wherein the second PVC layer (Fig 1, #2) is coupled to the second surface (bottom surface of #3).
Paillot teaches that it is old and well known in the art for multilayered boards (Fig 4) or (Fig 3) to have layers that are each flat and not corrugated (as shown in Figs 3 & 4). Paillot also discloses a board (Fig 4) comprising a first exterior layer (Fig 4, #2), a second exterior layer (Fig 4, #3), and an interior layer (Fig 4, #5) having a first surface (top surface) and a second surface (bottom surface), wherein the first layer (Fig 4, #2) is adhesively secured to the first surface (top surface of #5), and wherein the second layer (Fig 4, #3) is adhesive secured to the second surface (bottom surface of #5) (as shown in Fig 4) [0071].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach a second PVC layer (Lin, Fig 1, #2) to the second surface (bottom surface) of the foam layer (Cheng, Fig 1, #3A) of Cheng using the teachings of Lin in order to protect the bottom surface of the foam layer (Cheng, Fig 1, #3A) of Cheng from becoming scratched or damaged.
It also would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to fabricate the second PVC layer (Lin, Fig 1, #2) of modified Cheng to be flat and not corrugated similar to the first exterior polyvinyl chloride (PVC) layer (Cheng, Fig 1, #1A) or (Cheng, Fig 1, #1A & #2A) of modified Cheng and the foam layer (Cheng, Fig 1, #3A) [0018] [0020] of modified Cheng in order to make the board of modified Cheng more aesthetically appealing and consistent.
It also would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adhesively attach the first exterior polyvinyl chloride (PVC) layer (Cheng, Fig 1, #1A) or (Cheng, Fig 1, #1A & #2A) of modified Cheng to the first surface (top surface) of the interior foam layer (Cheng, Fig 1, #3A) of modified Cheng and attach the second exterior PVC layer (Lin, Fig 1, #2) of modified Cheng to the second surface (bottom surface) of the interior foam layer (Cheng, Fig 1, #3A) of modified Cheng using the teachings of Paillot in order to further secure the connection between the first exterior polyvinyl chloride (PVC) layer (Cheng, Fig 1, #1A) or (Cheng, Fig 1, #1A & #2A), the interior foam layer (Cheng, Fig 1, #3A) and the second exterior PVC layer (Lin, Fig 1, #2) of modified Cheng. Further, the substitution of one known connection means for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Regarding claim 3, modified Cheng discloses the board (Cheng, Fig 1 as modified), wherein the board (Cheng, Fig 1 as modified) is configured to be formed as a flat panel (as explained in the rejection of claim 1 above).
Regarding claim 4, modified Cheng discloses the board (Cheng, Fig 1 as modified), wherein the board (Cheng, Fig 1 as modified) is configured to be or capable of being cut, sized, shaped, and folded to form the one or more portions of the product holder system.
Regarding claim 5, modified Cheng discloses the board (Cheng, Fig 1 as modified) wherein the board (Cheng, Fig 1 as modified) is configured to be or capable of being cut, sized, shaped, and folded without being heated.
Regarding claim 6, modified Cheng discloses the board, wherein none of the first exterior PVC layer (Cheng, Fig 1, #1A) or (Cheng, Fig 1, #1A & #2A), the second exterior PVC layer (explained in the rejection of claim 1 above), or the interior foam layer (Fig 1, #3A) is corrugated.
Regarding claim 19, modified Cheng discloses a product holder system comprising: one or more shelves (Cheng, Fig 1 as modified) formed by one or more boards (Cheng, Fig 1 as modified) (the board (Cheng, Fig 1 as modified) is capable of being used as a shelf), wherein the one or more boards (Cheng, Fig 1 as modified) include: a first exterior polyvinyl chloride (PVC) layer (Cheng, Fig 1, #1A) or (Cheng, Fig 1, #1A & #2A); a second exterior PVC layer (as explained in the rejection of claim 1 above); and an interior foam layer (Cheng, Fig 1, #3A) having a first surface (top surface) and a second surface (bottom surface) opposite from the first surface (top surface), wherein the first PVC layer (Cheng, Fig 1, #1A) or (Cheng, Fig 1, #1A & #2A) is adhesively secured to the first surface (Cheng, top surface of #3A) (as explained in the rejection of claim 1 above), and wherein the second PVC layer (explained in the rejection of claim 1 above) is adhesively secured to the second surface (Cheng, bottom surface of #3A).
Regarding claim 21, modified Cheng discloses the product holder system wherein the one or more boards (Cheng, Fig 1 as modified) are configured to be formed as a flat panel (Cheng, Fig 1, #1A) or (Cheng, Fig 1, #1A & #2A), wherein the one or more boards (Cheng, Fig 1 as modified) are configured to be or capable of being cut, sized, shaped, and folded to form the one or more shelves, wherein the one or more boards (Cheng, Fig 1 as modified) are configured to be or capable of being cut, sized, shaped, and folded without being heated, and wherein none of the first exterior PVC layer (Cheng, Fig 1, #1A) or (Cheng, Fig 1, #1A & #2A), the second exterior PVC layer (as explained in the rejection of claim 1 above), or the interior foam layer (Cheng, Fig 1, #3A) is corrugated.
Regarding claim 23, modified Cheng discloses the board wherein the first PVC layer (Cheng, Fig 1, #1A) or (Cheng, Fig 1, #1A & #2A) is flat, wherein the second PVC layer is flat (as explained in the rejection of claim 1 above), wherein a first adhesive is disposed on the first surface (top surface) of the interior foam layer (Cheng, Fig 1, #3A) (as explained in the rejection of claim 1), and wherein a second adhesive is disposed on the second surface (bottom surface) of the interior foam layer (Cheng, Fig 1, #3A) (as explained in the rejection of claim 1).
Claims 1, 8, 19, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Volz 2019/0075942 in view of Lin 5,612,111 and Paillot 2020/0198304.
Regarding claims 1 and 8, Volz discloses a board (Fig 4, #412) or (Fig 2A, #108) configured to or capable of forming one or more portions of a product holder system (claim 1); the board (Fig 4, #412) or (Fig 2A, #108) further comprising one or more walls (Fig 4, #412) or (Fig 2A, #108), tabs (Fig 4, #420) or (annotated Fig 1 below), and slots (Fig 4, #402) or (annotated Fig 1 below) (claim 8).
PNG
media_image1.png
854
1040
media_image1.png
Greyscale
Volz has been discussed above but does not explicitly teach, the board comprising: a first exterior polyvinyl chloride (PVC) layer; a second exterior PVC layer; and an interior foam layer having a first surface and a second surface opposite from the first surface, wherein the first PVC layer is adhesively secured to the first surface, and wherein the second PVC layer is adhesively secured to the second surface (Claim 1); wherein the one or more walls and the tabs include the first exterior PVC layer, the second exterior PVC layer, and the interior foam layer (claim 8).
Lin discloses a board (Fig 4) configured to or capable of forming one or more portions of a product holder system, the board (Fig 4) comprising:
a first exterior polyvinyl chloride (PVC) layer (Fig 1, #1);
a second exterior PVC layer (Fig 1, #2); and
an interior foam layer (Fig 1, #3) having a first surface (top surface) and a second surface (bottom surface) opposite from the first surface (top surface), wherein the first PVC layer (Fig 1, #1) is coupled to the first surface (top surface of #3), and wherein the second PVC layer (Fig 1, #2) is coupled to the second surface (bottom surface of #3) (claim 1).
Paillot discloses a board (Fig 4) comprising a first exterior layer (Fig 4, #2), a second exterior layer (Fig 4, #3), and an interior layer (Fig 4, #5) having a first surface (top surface) and a second surface (bottom surface), wherein the first layer (Fig 4, #2) is adhesively secured to the first surface (top surface of #5), and wherein the second layer (Fig 4, #3) is adhesive secured to the second surface (bottom surface of #5) (as shown in Fig 4) [0071].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to fabricate the board (Volz, Fig 4, #412) or (Volz, Fig 2A, #108) of Volz and tabs (Volz, Fig 4, #420) or (Volz, annotated Fig 2A above) to be a multilayered comprising a first exterior polyvinyl chloride (PVC) layer (Lin Fig 1, #1), a second exterior PVC layer (Lin, Fig 1, #2); and an interior foam layer (Lin, Fig 1, #3) as taught by Lin because the substitution of one known board material for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Further, 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.
The combination of Volz and Lin results in wherein the one or more walls (Volz, Fig 4, #412) or (Volz, Fig 2A, #108) and the tabs (Volz, Fig 4, #420) or (Volz, annotated Fig 1 below) include the first exterior PVC layer (Lin, Fig 1, #1), the second exterior PVC layer (Lin, Fig 1, #2), and the interior foam layer (Lin, Fig 1, #3).
It also would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adhesively attach the first exterior polyvinyl chloride (PVC) layer (Lin Fig 1, #1) of modified Volz to the first surface (top surface) of the interior foam layer (Lin, Fig 1, #3) of modified Volz and attach the second exterior PVC layer (Lin, Fig 1, #2) of modified Volz to the second surface (bottom surface) of the interior foam layer (Lin, Fig 1, #3) of modified Volz using the teachings of Paillot in order to further secure the connection between the first exterior polyvinyl chloride (PVC) layer (Lin Fig 1, #1) of modified Volz, the interior foam layer (Lin, Fig 1, #3) of modified Volz and the second exterior PVC layer (Lin, Fig 1, #2) of modified Volz. Further, the substitution of one known connection means for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Regarding claim 19, modified Volz discloses a product holder system comprising: one or more shelves (Volz, Fig 4, #412) or (Volz, Fig 2A, #108) (each capable of being used as shelf) formed by one or more boards (Volz, Fig 4, #412) or (Volz, Fig 2A, #108), wherein the one or more boards (Volz, Fig 4, #412) or (Volz, Fig 2A, #108) include: a first exterior polyvinyl chloride (PVC) layer (Lin, Fig 1, #1); a second exterior PVC layer (Lin, Fig 1, #2); and an interior foam layer (Lin, Fig 1, #3) having a first surface (top surface) and a second surface (bottom surface) opposite from the first surface (top surface), wherein the first PVC layer (Lin, Fig 1, #1) is coupled to the first surface (Lin, top surface of #3), and wherein the second PVC layer (Lin, Fig 1, #2) is coupled to the second surface (Lin, bottom surface of #3).
Regarding claim 22, modified Volz discloses the product holder system wherein the one or more board (Volz, Fig 4, #412) or (Volz, Fig 2A, #108) further include one or more walls (Volz, Fig 4, #412) or (Volz, Fig 2A, #108), tabs (Volz, Fig 4, #420) or (Volz, annotated Fig 1 above), and slots (Volz, Fig 4, #402) or (Volz, annotated Fig 2A above), and wherein the one or more walls (Volz, Fig 4, #412) or (Volz, Fig 2A, #108) and the tabs (Volz, Fig 4, #420) or (Volz, annotated Fig 1 above) include the first exterior PVC layer (Lin, Fig 1, #1), the second exterior PVC layer (Lin, Fig 1, #2), and the interior foam layer (Lin, Fig 1, #3).
Claims 1 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Pfeifer 11,154,145 in view of Lin 5,612,111 and Paillot 2020/0198304.
Regarding claims 1 and 24, Pfeifer discloses a board (Fig 1, #24) configured to or capable of forming one or more portions of a product holder system (claim 1); the board (Fig 1, #24) further comprising one or more cuts (annotated Fig 1) that allow 90° folding of the board (Fig 1, #24) (claim 24).
PNG
media_image2.png
776
907
media_image2.png
Greyscale
Pfeifer has been discussed above but does not explicitly teach, the board comprising: a first exterior polyvinyl chloride (PVC) layer; a second exterior PVC layer; and an interior foam layer having a first surface and a second surface opposite from the first surface, wherein the first PVC layer is adhesively secured to the first surface, and wherein the second PVC layer is adhesively secured to the second surface (claim 1).
Lin discloses a board (Fig 4) configured to or capable of forming one or more portions of a product holder system, the board (Fig 4) comprising:
a first exterior polyvinyl chloride (PVC) layer (Fig 1, #1);
a second exterior PVC layer (Fig 1, #2); and
an interior foam layer (Fig 1, #3) having a first surface (top surface) and a second surface (bottom surface) opposite from the first surface (top surface), wherein the first PVC layer (Fig 1, #1) is coupled to the first surface (top surface of #3), and wherein the second PVC layer (Fig 1, #2) is coupled to the second surface (bottom surface of #3) (claim 1).
Paillot discloses a board (Fig 4) comprising a first exterior layer (Fig 4, #2), a second exterior layer (Fig 4, #3), and an interior layer (Fig 4, #5) having a first surface (top surface) and a second surface (bottom surface), wherein the first layer (Fig 4, #2) is adhesively secured to the first surface (top surface of #5), and wherein the second layer (Fig 4, #3) is adhesive secured to the second surface (bottom surface of #5) (as shown in Fig 4) [0071].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to fabricate the board (Pfeifer, Fig 1, #24) to be a multilayered comprising a first exterior polyvinyl chloride (PVC) layer (Lin, Fig 1, #1), a second exterior PVC layer (Lin, Fig 1, #2); and an interior foam layer (Lin, Fig 1, #3) as taught by Lin because the substitution of one known board material for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Further, 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.
It also would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adhesively attach the first exterior polyvinyl chloride (PVC) layer (Lin Fig 1, #1) of modified Pfeifer to the first surface (top surface) of the interior foam layer (Lin, Fig 1, #3) of modified Pfeifer and attach the second exterior PVC layer (Lin, Fig 1, #2) of modified Pfeifer to the second surface (bottom surface) of the interior foam layer (Lin, Fig 1, #3) of modified Pfeifer using the teachings of Paillot in order to further secure the connection between the first exterior polyvinyl chloride (PVC) layer (Lin Fig 1, #1) of modified Pfeifer, the interior foam layer (Lin, Fig 1, #3) of modified Pfeifer and the second exterior PVC layer (Lin, Fig 1, #2) of modified Pfeifer. Further, the substitution of one known connection means for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Allowable Subject Matter
Claim 25 is allowed.
Response to Arguments
Applicant's arguments filed 06/12/2026 have been fully considered but they are not persuasive.
Applicant’s arguments that “As explained below, however, Lin teaches away from adhesively securing a foam layer to PVC layers. Lin discloses a "middle foam layer produced by spraying foam agent onto one side of the [corrugated] upper layer which will expand into shape automatically." See Lin at Abstract. In particular, the "foamed layer [is] produced by means of a PU foam agent which expands and becomes so sticky that the upper layer and bottom layer can be integrally bounded together naturally by the middle PU foam." See id. at column 1, lines 11-15. Further, the "middle foam
layer can bind the upper layer and bottom layer firmly together as a result of foaming process." See id. at column 1, lines 53-55. The "PU foam agent 3 is sprayed onto one side of the corrugated upper layer 1 and the bottom layer 2 " See id. at column 2, lines 28-31. Notably, the "PU foam agent begins to foam and fully expanded into shape, and the foamed agent becomes sticky enough to bind the corrugated steel plate 1 or the like material and the PVC film 2 or the like as above cited together." See id. at column 2, lines 31-35. The PU foam agent expands within the gaps between the upper and bottom layers to form a sticky sealant that secures layers together. See id. at column 2, lines 40-42 ("PU foam agent 3 can be sealedly confined in between the upper layer 1 ad the bottom layer 2 in foaming process"). See also id. at column 2, line 63 to column 3, line 1 ("sprayed with foam agent 3 in proper amount so that the foam agent will be confined
and foam into shape"). As explained above, Lin expressly teaches that foam is sprayed onto different layers to expand into shape and sealingly connect the layers together. Attempting to apply an adhesive to an already formed foam layer would render the process of Lin inoperable. That is, Lin expressly requires that foam be sprayed onto the surfaces in order to expand and seal the layers together. Therefore, Lin precludes application of a separate adhesive to the foam, thereby teaching away from such adhesive. A prior art reference must be considered in its entirety, including portions that would lead away from the claimed invention. See W.L. Gore & Associates, Inc. v Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). Notably, "[i]t is improper to combine references where the references teach away from their combination." See Manual of Patent Examining Procedure (MPEP) at § 2145, citing In re Graselli, 713 F.2d 731, 743, 218 USPQ 769, 779 (Fed. Cir. 1983). In this case, the foaming process of Lin teaches away from "wherein the first PVC layer is adhesively secured to the first surface, and wherein the second PVC layer is adhesively secured to the second surface," as recited in claims 1 and 19. For at least these reasons, the proposed modification of Lin to include an adhesive is improper, and a prima facie case of unpatentability has not been established. Also, as explained in the Manual of Patent Examining Procedure (MPEP), if the "proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification." See MPEP at 2143.01(V), citing In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984). In this case, applying adhesives to a fully formed foam layer renders Lin unsatisfactory for its intended purpose, as Lin expressly requires that the foam be sprayed onto the layers and allowed to expand and stick to the layers. For at least these additional reasons, the proposed modification of Lin to include an adhesive is improper, and a prima facie case of unpatentability has not been established” are not persuasive.
In accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Determination of patentability is based on the product itself. The patentability of a product, i.e –foam having an adhesive---, does not depend on its method of production, i.e. –applying an adhesive to a prefabricated foam board --. In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985).
In determining obviousness, it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review (In re Sneed, 710 F.2d 1544,1550 (Fed. Cir. 1983)). In particular, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention be expressly suggested in any one or all references (In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Furthermore, a person of ordinary skill in the art is also a person of ordinary creativity, not an automation (KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742 (2007)). In an obviousness analysis it is not necessary to find precise teachings in the prior art directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account (Id. at 1741). In the instant case, the examiner maintains that a person armed with Lin and Paillot would have readily understood how an interior foam layer could be adhesively secured to and sandwiched between two PVC layers without benefit of impermissible hindsight since the combination only involves well known elements combined in a well known manner. Such modifications are of ordinary innovation.
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 DEVIN K BARNETT whose telephone number is (571)270-1159. The examiner can normally be reached Monday-Friday 11am-7:30pm.
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, Jonathan Liu can be reached at 571-272-8227. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DEVIN K BARNETT/Primary Examiner, Art Unit 3631
Prosecution Insights