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.
Response to Amendment
The Amendment filed 05/26/2026 has been entered. Claims 41-60 remain pending in the application.
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, 44-45, 48-55, 58-60 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).
Regarding claim 41-42, 44, & 54, 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].
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).
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)).
Claim(s) 46-47, 56-57 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 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.
Response to Arguments
Applicant's arguments filed 05/26/2026 have been fully considered but they are not persuasive.
Applicant argues that the combination of Bossyut and Mizrahi do not quantifiably disclose that the sublayer is plastically deformable and that it is not plastically more deformable than the core.
The examiner disagrees. Bossyut discloses the sublayer being plastically deformable (as noted above in claim 41 rejection, and Bossyut does not disclose the core being deformable, which would mean that the sublayer is more deformable than the core. With regards to specifically plastically deformable, the layer 9d of Bossyut is a plastic layer (pg.21, lines 1-13; figure 7 ) and when heated and pressurized would deform as a plastic does i.e. plastically deform. At the very least, Ziegler, used in the rejection of claim 43, discloses a core that is exactly as claimed (SPC core), and thus Bossyut, Mizrahi, as modified by Ziegler, at the very least would also disclose the totality of the instant invention. Further, applicant argues that there is quantifiable deformation being claimed, however, there is no specific numerical value being claimed as pertaining to any property which would affect the deformation, or even a numerical deformation value. Thus, it is not clear, as pointed out above, how the instant claims differentiate from the prior art, when the instant claims merely recite a sublayer that is more plastically deformable than a core, which as explained above is disclosed by Bossyut as modified by Mizrahi.
Applicant argues that the limitations of claims 47 & 57 are not product-by process limitations.
The examiner disagrees. Claims 47 & 57 recite a process of embossing the product and are thus product by process claims, and material or article worked upon limitations. And as such, Lewicki discloses an apparatus capable of carrying out the process and working on the article as claimed (see rejections of claims 47 & 57 above).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., quantifiable deformation) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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
THIS ACTION IS MADE FINAL. 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 ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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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.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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