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 Objections
Claims 1-19 are objected to because of the following informalities:
With regard to claim 1: Line 39 of the claim, it appears “coupled condition” should be --the coupled condition-- for consistency of the claim language. Line 43 of the claim, it appears the limitation “said space” should be --said second space-- for consistency of the claim language.
With regard to claim 12: Lines 2 and 6 of the claim, it appears the limitation “a coupled condition” should be directed to --the coupled condition-- for consistency of the claim language.
Appropriate correction is required.
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.
Claim(s) 1-11 and 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Whispell et al. (US 2014/0352248 A1).
With regard to claim 1: Whispell et al. discloses a floor panel (10 or 10’) for forming a floor covering, the floor panel (10 or 10’) comprising a substrate (base layer 31) (fig. 6; par. [0066]), and a decorative top layer (print design 35) situated above the substrate (31) (fig. 3 and 10; par. [0066]); said floor panel (10 or 10’) having a thickness defined by said substrate (31) and decorative top layer (35);
wherein the substrate (31) includes at least a first layer (31b-31c) that is formed of a composition that includes a thermoplastic synthetic material comprising polyvinyl chloride (par. [0173]);
Whis the composition further comprises inorganic fillers including talc (par. [0178]).
Whispell et al. discloses that the composition can include plasticizers (emphasis added) (par. [0068]), which is interpreted to mean that the composition can also be free of plasticizers.
Whispell et al. further discloses that the decorative top layer (35) comprises a decor (print design 35) and a transparent or translucent wear layer (37) situated above the décor (par. [0077] and [0190]));
wherein the floor panel (10 or 10’) is rectangular, either oblong or square, and comprises a first pair of opposite edges and a second pair of opposite edges (figs. 1-2);
wherein the first pair of opposite edges (sides 1 and 2) is provided with first coupling parts (1010, 1020), which allow effecting a coupled condition between two of such floor panels (10 and 10’) by means of a rotation movement around an axis parallel to a plane of the floor covering and parallel to the edges to be coupled (fig. 2, 5-6, and 9);
wherein the second pair of opposite edges (sides 3 and 4) is provided with second coupling parts (1010, 1020), which allow effecting a coupled condition between two of such floor panels (10, 10’) (figs. 2, 5-6, and 9);
wherein the first coupling parts (1010, 1020) substantially are manufactured of the material of said first layer (31b-31c) and substantially are realized in the form of a tongue (1010) and a groove (1020) (figs. 3 and 9), which are provided with locking parts (1016, 1041), which, in the coupled condition of two of such floor panels (10, 10’), counteract the moving apart of the coupled floor panels (10, 10’) in a direction perpendicular to the coupled edges and parallel to the plane of the floor covering (figs. 5-6 and 9);
wherein the groove (1020) is bordered by an upper lip (1030) and a lower lip (1040) (fig. 10), which the lower lip (1040), in distal direction, extends beyond a distal end of the upper lip (1030), and, a portion of the lower lip (1040) that extends beyond the distal end of the upper lip (1030) comprises one of said locking parts in the form of an upward-directed part (1041) (fig. 1);
wherein said locking parts (1016, 1041) include locking surfaces to counter the moving apart of the coupled floor panels (10, 10’) (fig. 10).
Whispell et al. discloses that the locking surfaces define a tangent line forming an angle (β) with the plane of the floor covering is 63.10 degrees (figs. 16-17; par. [0101]), which is between the claimed 50 and 80 degrees.
Whispell et al. appear to disclose that the first layer (31b-31c) forms at least half of said thickness of the floor panel (10 or 10’) (fig. 3).
Whispell et al. does not explicitly disclose that the first layer forms at least half of said thickness of the floor.
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have good reason to pursue the known options within his or her technical grasp, as the selected option was one of a finite number of available thickness proportions of the first layer of the substate relative to the thickness of the floor panel in order provide a desired degree of rigidity and strength to the floor panel. No new or unpredictable results would be obtained from modifying the first layer of Whispell et al. to form at least half of the thickness of the floor panel. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
Whispell et al. discloses in the coupled condition of two of such floor panels, a first contact is formed between an upper side of the tongue (1010) and a lower side of the upper lip (1030), wherein in the coupled condition because two of such floor panels a first space (area 816) is between the most distal point of the tongue and most proximal portion of the groove (fig. 43), wherein said first space (area 816) continuously extends from said first contact to a bottom side of the tongue (fig. 42). Whispell al. discloses a second space (above area 816) is defined on a lower side of the tongue (1010), said second space (above area 816) extending on either side of a distal end of the upper lip (1030) (fig. 42).
With regard to claim 2: Whispell et al. discloses a horizontal distance of 1.05 between a most proximally situated point of the groove (1020) and the distal end of the upper lip (1030) is 0.3 times (1.05/4.01 = 0.259 = 0.3) the thickness of 4.01 of the floor panel (fig. 49), which fails between the claimed 0.3 and 0.6 times the thickness of the floor panel.
With regard to claim 3: Whispell et al. discloses that said first contact comprises, seen from the distal end of the upper lip (1030) towards the most proximally situated point of the groove (1020), downwardly inclined locking surfaces (figs. 10 and 17).
With regard to claim 4: Whispell et al. discloses said upward-directed part (1041) extends over a height (H=0.028 inches) which is more than 0.1 times said thickness (CSt = 0.118 inches) of the floor panel (10 or 10’) (figs. 10 and 12; par. [0096]).
With regard to claim 5: Whispell et al. discloses that the most upward-situated point of said upward-directed part (1041) is situated at a height (H + Tg = 0.028 inches + 0.045 inches = 0.073 inches) in respect to an underside of the floor panel (10, 10’) (figs. 10 and 12; par. [0096]), which is 0.618 ((H+Tg)/CSt=0.073/0.118) times the thickness of the floor panel. Examiner submits that the value of 0.618 times the thickness of the floor panel falls within the claimed range of at least 0.45 times said thickness of the floor panel; wherein said height of the most upward-situated point of the upward-directed part is maximum 0.75 times said thickness of the floor panel.
With regard to claim 6: Whispell et al. discloses that said lower lip (1040) extends over a horizontal distance of 0.207 beyond the distal end of the upper lip (1030) (fig. 49) which is 1.31 times (0.207/.0.158) said thickness of 0.158 of the floor panel (fig. 49), which is less than the claimed 1.5 times said thickness of the floor panel; and/or at least 0.85 times the thickness of the floor panel.
With regard to claim 7: Whispell et al. discloses that the first layer (31b-31c) is foamed (par. 0174).
With regard to claim 8: Whispell et al. discloses that the thickness (CSt) of the floor panel is 4 mm or 5mm (par. 0101 and 0115), which falls within the claimed range of at least 4 mm and less than 8 mm.
With regard to claim 9: Whispell et al. discloses that the first coupling parts are configured such that in coupled condition of the floor panel (10', left floor panel ) at its first pair of opposite edges with another of such floor panel (10, right floor panel), a distal end of the lower lip (10) of the floor panel (10', left floor panel) is separated from the other such floor panel (10, right floor panel) (figs. 6 and 17).
With regard to claim 10: Whispell et al. discloses that proximally from the distal end of the upper lip (1030) a second contact is formed between a lower side of the tongue (1010) and an upper side of the lower lip (1040) (figs. 10 and 17).
With regard to claim 11: Whispell et al. disclose a space is present on a lower side of the tongue (1010) which extends up to a contact formed between the lower side of the tongue (1010) and the upper side of the lower lip (1040) (figs. 10 and 17) .
With regard to claim 16: Whispell et al. discloses that the substrate (31) is multilayered and includes at least the first layer (31b-31c) and a supple layer (31a made of PVC comprising flexibility) situated above said first layer (31b-31c) (fig. 3; (par. [0173]).
With regard to claim 17: Whispell et al. discloses that the supple layer (31a) includes a thermoplastic material including polyvinyl chloride (fig. 3; (par. [0173]).
With regard to claim 18: Whispell et al. discloses that a minimum thickness (Tg=0.045 inches) of the lower lip (1040) that is 0.005 times (Tg/CSt= 0.045/0.118 inches) the thickness (CSt=0.118 inches) of floor panel (figs. 10 and 12; par. [0096]), which fails within the claimed maximum 0.3 times the thickness of the floor panel.
With regard to claim 19: Whispell et al. discloses that the minimum thickness (Tg) of the lower lip (1040) is where said upward-directed part (1041) begins (fig. 10).
Claim(s) 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Whispell et al. (US 2014/0352248 A1) in view of Hannig et al. (US 8,038,363 B2).
With regard to claim 12: Whispell et al. does not disclose that the second coupling parts
comprise a horizontally active locking system, which, in a coupled condition of two of such floor panels,
effects a locking in the plane of the floor panels and perpendicular to the respective edges; wherein the
second coupling parts also comprise a second vertically active locking system, which, in a coupled
condition of two of such floor panels, effects a locking transverse to the plane of the floor panels;
wherein the horizontally active locking system of the second pair of edges is formed at least of an
upward-directed lower hook-shaped part, which is situated on one of said two edges, and as a
downward-directed upper hook-shaped part, which is situated on the opposite edge, wherein the lower
hook-shaped part consists of a lip with an upward-directed locking element, which is proximally thereof
defines a female part in the form of a recess, whereas the upper hook-shaped part comprises a lip with a
downward-directed locking element forming a male part.
However, Hannig et al. discloses a floor panel (22 or 23) comprising a second pair of opposite edges comprise second coupling parts (28 and 29) comprise a horizontally active locking system, which, in a coupled condition of two of such floor panels (22 and 23), effects a locking in the plane of the floor
panels (22 and 23) and perpendicular to the respective edges; wherein the second coupling parts (28
and 29) also comprise a second vertically active locking system, which, in a coupled condition of two of
such floor panels (22 and 23), effects a locking transverse to the plane of the floor panels (22 and 23);
wherein the horizontally active locking system of the second pair of edges is formed at least of an
upward-directed lower hook-shaped part (28) which is situated on one of said two edges, and as a
downward-directed upper hook-shaped part (29), which is situated on the opposite edge, wherein the
lower hook-shaped part (28) consists of a lip with an upward-directed locking element (28), which
proximally thereof defines a female part in the form of a recess, whereas the upper hook-shaped part
(29) comprises a lip with a downward-directed locking element (29) forming a male part (fig. 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of
the claimed invention to modify the floor panel of Whispell et al. to have the second coupling parts
comprise a horizontally active locking system, which, in a coupled condition of two of such floor panels,
effects a locking in the plane of the floor panels and perpendicular to the respective edges; wherein the
second coupling parts also comprise a second vertically active locking system, which, in a coupled
condition of two of such floor panels, effects a locking transverse to the plane of the floor panels;
wherein the horizontally active locking system of the second pair of edges is formed at least of an
upward-directed lower hook-shaped part which is situated on one of said two edges, and as a
downward-directed upper hook-shaped part, which is situated on the opposite edge, wherein the lower
hook-shaped part consists of a lip with an upward-directed locking element, which is proximally thereof
defines a female part in the form of a recess, whereas the upper hook-shaped part comprises a lip with a
downward-directed locking element forming a male part such as taught by Hannig in order to provide a
known means of fastening adjacent floor panels to one another so as to mitigate unwanted movement.
No new or unpredictable results would be obtained from substituting one known coupling parts for
another. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of
success, and would be based on ordinary skill and common sense before the effective filing date of the
claimed invention.
With regard to claim 13: Whispell et al. as modified by Hannig discloses that in coupled
condition at the second pair of opposite edges of two of the floor panels, the distal end of the upward-
directed lower hook-shaped part is separated from the opposite panel edge.
With regard to claim 14: Hannig discloses that the second coupling parts (28 and 29) comprise a first vertically active locking system including vertically active locking parts, which, by means of respective contact surfaces, define at least a first contact zone which is provided between a distal end of the upward directed locking element (28) and a distal end of the downward directed locking element
(29), wherein the first contact zone is an inclined contact zone, wherein said inclined contact zone
effects a locking in the plane of the floor panels and perpendicular to the respective edges; wherein the
second vertically active locking system comprises vertically active locking parts, which, by means of
respective contact surfaces, define at least a second contact zone which is provided between a distal
end of the downward-directed locking element (29) and a proximal end of the upward-directed lower
hook-shaped part (28) (fig. 6).
With regard to claim 15: Whispell et al. as modified by Hannig discloses that the downward-
direct locking element and the upward- directed locking element are manufactured substantially in said
first layer; wherein the first coupling parts are configured such that in coupled condition of the floor
panel at its first pair of opposite edges with another of such floor panel, a distal end of the lower lip of
the floor panel is separated from the other such floor panel; wherein in the coupled condition of two of
such floor panels a contact is formed between an upper side of the tongue and a lower side of the upper
lip; and wherein proximally from the distal end of the upper lip a contact is formed bet ween a lower side of the tongue and an upper side of the lower lip.
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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,821,218. Although the claims at issue are not identical, they are not patentably distinct from each other because the elements of the instant claims can be found within the patented claims.
Response to Arguments
The previous objection of claims 1-20 has been withdrawn in view of the amendment filed 7/30/26.
Applicant's arguments filed 7/30/26 have been fully considered but they are not persuasive.
Applicant argues that Whispell does not teach or suggest the particular special relationship now recited by amended claim 1.
Examiner respectfully submits that Whispell et al. discloses in the coupled condition of two of such floor panels, a first contact is formed between an upper side of the tongue (1010) and a lower side of the upper lip (1030), wherein in the coupled condition because two of such floor panels a first space (area 816) is between the most distal point of the tongue and most proximal portion of the groove (fig. 43), wherein said first space (area 816) continuously extends from said first contact to a bottom side of the tongue (fig. 42) Whispell al. discloses a second space (above area 816) is defined on a lower side of the tongue (1010), said second space (above area 816) extending on either side of a distal end of the upper lip (1030) (fig. 42).
Applicant further because claim 12 depends from amended claim 1, the proposed combination must include both the particular first coupling geometry now required by amended claim 1 and the second coupling parts relied on from Hanning.
Examiner respectfully submits that Whispell et al. discloses the first coupling parts and that the proposed combination is to the second coupling parts. The secondary reference of Hanning et al. discloses a floor panel having two pairs of coupling parts different from one another. No new or unpredictable results would be obtained from substituting one known coupling parts for another. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
The rejection of claims 1-20 on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,907,363; claim 1-22 of U.S. Patent No. 11,428,017; and claims 1- 22 of U.S. Patent No. 11,668,107; and claims 1-18 of U.S. Patent No. 12,158,014 has been withdrawn in view of the amendment filed 7/30/26.
The rejection of claims 1-20 on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,821,218 remains. Note that that the patented claims discloses the elements of the instant claims including the spaces claimed. Applicant argues that the pending claims are directed to their particular structural relationship in the coupled condition, however, Examiner submits the structure found in the patented claims would result in the spaces of instant claims.
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 JESSIE T FONSECA whose telephone number is (571)272-7195. The examiner can normally be reached 7:00am - 3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached at (571)272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSIE T FONSECA/Primary Examiner, Art Unit 3633
