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 . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/14/2026 has been entered.
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.
The factual inquiries 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(s) 41-42, 44-61 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bossuyt (WO2018130924A1 - cited in IDS and reference provided by applicant) and Mizrahi (U.S PG Pub 20100040902A1) and Lewicki (U.S Patent 3953639).
Regarding claim 41-42, 44, & 54 & 61, Bossuyt, drawn also to the art of a floor panel (Abstract), discloses a building/floor panel (page 1, lines 4-9), which comprises joining a first and a second material to form a first layer and second layer of a semi-finished panel, wherein the first material comprises a thermoplastic, thermoset or mineral material (pg.21, lines 1-13; figure 7 – combined substrate 9a-9b-9c interpreted as the first layer, and flexible substrate layer 9d interpreted as the sublayer layer), and further applying a third layer (pg.21, lines 15-18 - décor layer 10 corresponding to the surface layer), and then applying heat and pressure to form the panel (pg.21, lines 16-17 – thermal laminating process would include heating and pressing). Bossuyt also discloses the limitations of the first layer forming the core i.e. layers 9a-9b-9c being the core (pg.15, lines 6-10; Figure 2), and the sublayer forms a layer between the first and third layer and the third layer being the surface layer (figures 2 & 6; pg.21, lines 15-18), and further that the sublayer layer is configured to plastically deform when heat and pressure is applied (pg.17, lines 27-30; Figure 5).
Regarding the limitation of the ‘wherein the core is an extruded core’, this is a product by process claim limitation and an article or material worked upon recitation, and as such a product claim is not limited by the process in which it is made or by the material or article worked upon (see MPEP 2113 (I) & MPEP 2114 & MPEP 2115). Regardless, in the spirit of advancing prosecution, the examiner notes that it is known in the art to form a layer in a panel by extrusion, as disclosed by Mizrahi.
Mizrahi, drawn also to the art of composite (Abstract) panels [0020-0021], discloses that the core is formed by an extrusion process [0018].
It would have been obvious to an ordinarily skilled artisan to have modified the floor panel of Bossyut, with the core being formed by extrusion, as disclosed by Mizrahi, to arrive at the instant invention, in order to improve bonding to another material such as an adhesive [0014].
Further, regarding the limitation of the core having an E-modulus (i.e. Young’s modulus) of between 2000-10000 MPa (as in instant claims 44 & 54), this limitation has also been disclosed by Mizrahi.
Mizrahi, discloses a Young’s modulus greater than 950 MPa [0060] of the core, and as such this value forms an overlapping and encompassing range with the instantly claimed range and obviates the instant range. The courts have held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (MPEP 2144.05(I)).
It would have been obvious to an ordinarily skilled artisan to have modified the floor panel of Bossyut, with the modulus being in a range as claimed, as disclosed by Mizrahi, to arrive at the instant invention, in order to have a composite that has improved ductility [0012].
Bossyut has not explicitly disclosed embossing the second and third layer, however, this limitation is known from Lewicki.
Lewicki, drawn also to the art of a laminated floor material (Abstract), discloses embossing a sublayer and surface layer (layers 26 & 28), wherein the layers are partially deformed (see figure 2).
It would have been obvious to an ordinarily skilled artisan to have modified the floor panel of Bossyut, with the step of embossing as disclosed by Lewicki, to arrive at the instant invention, in order to be able to obtain an embossed floor material with a resilient backing (Column 1, lines 1-10).
Regarding the specific conditions of embossing, it is noted that the instant limitations amount to product by process claim limitations and article or material worked upon limitations, and as such a product claim is not limited by the process in which it is made or by the material or article worked upon (see MPEP 2113 (I) & MPEP 2114 & MPEP 2115). Regardless, as noted directly above, Lewicki has disclosed embossing the sublayer and surface layer and disclosed that the sublayer is partially deformed. Thus, the apparatus of Lewicki would be capable of carrying out the intended use and process limitations of the instant claims.
Finally, with regards to the sublayer being at least 25% more deformable than the core, as can be seen from Lewicki (figure 2), the layer 26 (interpreted as the sublayer – a layer above a core), has embossings 34 & 31, and as can be seen from figure 2 also, the core (28) does not have any embossings as such, thus this would mean that the core is not deformed, and the sublayer is deformed, meaning that the sublayer is at least 25% more deformable than the core. This would also mean the sublayer is at least 50% more deformable than the core, since the core has no depressions or texture (34 & 31) that are caused by the embossing, whereas the layer 26 does.
Regarding claims 45 & 55, Bossyut has disclosed that the sublayer layer is configured to plastically deform when heat and pressure is applied (pg.17, lines 27-30; Figure 5).
Regarding claims 48-49 & 58-59, Bossyut has disclosed the instant limitations (see pg.5, line 6, pg.15, line 9 for claim 2; pg.5, lines 31-33 & pg.6, lines 1-3 for claims 3-5). Further, the courts have held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (MPEP 2144.05 (I)).
Regarding claims 50 & 60, Bossyut has disclosed the instant limitations (see pg.15, line 10, pg.5, line 29, and pg.6, lines 1-3).
Regarding claims 51-52, Bossyut discloses the instant limitations (see pg.5, line 11).
Regarding claims 53, Bossyut has disclosed the second layer comprising a blend of PVC/PVAc co-polymer (see pg.6, lines 5-8).
Regarding claims 46 & 56, Bossyut has not explicitly disclosed embossing the second and third layer, however, this limitation is known from Lewicki.
Lewicki, drawn also to the art of a laminated floor material (Abstract), discloses embossing a sublayer and surface layer (layers 26 & 28), wherein the layers are partially deformed (see figure 2).
It would have been obvious to an ordinarily skilled artisan to have modified the floor panel of Bossyut, with the step of embossing as disclosed by Lewicki, to arrive at the instant invention, in order to be able to obtain an embossed floor material with a resilient backing (Column 1, lines 1-10).
Regarding claims 47 & 57, it is noted that the instant limitations amount to product by process claim limitations and article or material worked upon limitations, and as such a product claim is not limited by the process in which it is made or by the material or article worked upon (see MPEP 2113 (I) & MPEP 2114 & MPEP 2115). Regardless, as noted directly above, Lewicki has disclosed embossing the sublayer and surface layer and disclosed that the sublayer is partially deformed. Thus, the apparatus of Lewicki would be capable of carrying out the intended use and process limitations of the instant claims.
Claim(s) 43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bossuyt (WO2018130924A1 - cited in IDS and reference provided by applicant) and Mizrahi (U.S PG Pub 20100040902A1), and Ziegler (U.S PG Pub 20180339504A1).
Regarding claim 43, neither Bossyut nor Mizrahi have explicitly disclosed the score being a SPC core. However, this limitation is known from Ziegler.
Ziegler, drawn also to the art of a building panel (Abstract), discloses the core/substrate being a SPC substrate [0068].
It would have been obvious to an ordinarily skilled artisan to have modified the panel of Bossyut and Mizrahi, with the core being a SPC core, as disclosed by Ziegler, to arrive at the instant invention, since as such, such a modification would merely involve the simple substitution on one known element for another, and the courts have held that the simple substitution of known elements is obvious and a matter of ordinary skill in the absence of new or unexpected results (MPEP 2143 I(B)).
Response to Arguments
Applicant’s arguments, see RCE, filed 09/14/2026, with respect to the rejection(s) of claim(s) 41 under Bossyut and Mizrahi have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Bossyut, Mizrahi and Lewicki.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
In response to applicant's argument that the references do not contemplate the relationship between the deformation response and the significance of this as pertaining to floor panels, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: U.S PG Pub 20110268921A1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-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, Michael Orlando can be reached at (571)270-5038. 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.
/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
