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 .
Withdrawn Rejections
Any rejections and or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn due to Applicant’s amendments and/or arguments in the response dated March 2, 2026. However, new rejections may have been made using the same prior art if still applicable to the newly presented amendments and/or arguments.
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.
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Claims 1 – 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 12 of U.S. Patent No. 12,162,254 to AbdulBaki et al. Although the claims at issue are not identical, they are not patentably distinct from each other because they both are directed towards a device for covering a surface.
AbdulBaki et al. disclose a device for covering a surface, the device comprising: a laminated assembly comprising a first adhesive layer, a substrate layer, a second adhesive layer, and a finish layer, wherein the first adhesive layer is disposed on a first side of the substrate layer for use in bonding the laminated assembly to an underlying surface, wherein the second adhesive layer is disposed on a second side of the substrate layer and between the substrate layer and the finish layer; and wherein a combination of the substrate layer and the finish layer of the laminated assembly is divided into discontinuous segments separated by cut lines that extend between the discontinuous segments; and a flexible carrier layer bonded to the finish layer by a third adhesive layer, wherein the flexible carrier layer and the third adhesive layer are configured to retain the discontinuous segments in a fixed spatial alignment, and wherein the third adhesive layer is configured to cleanly detach from the finish layer by manual peeling (Claim 1) as in claim 1. With respect to claim 2, the substrate layer comprises at least one of a foam layer, a polymeric sheet layer, or a film layer (Claim 2). Regarding claim 3, the substrate layer is bonded to the finish layer by the second adhesive layer (Claim 3). For claim 4, the finish layer comprises at least one of a simulated wood surface, a simulated fabric surface, and a simulated tile surface (Claim 4). In claim 5, adjacent discontinuous segments are separated by a simulated flooring joint (Claim 5). With regard to claim 6, the discontinuous segments comprise six discrete segments, each of which is configured to simulate a wood plank (Claim 6). As in claim 7, the finish layer comprises a printed image (Claim 7). With respect to claim 8, the first adhesive layer comprises a dry adhesive (Claim 8). Regarding claim 9, a protective liner bonded to the first adhesive layer (Claim 9). For claim 10, the underlying surface comprises at least one of wood, concrete, vinyl, and carpet fiber (Claim 10). In claim 11, the flexible carrier layer has a plurality of apertures (Claim 11). With regard to claim 12, the laminated assembly has a width of approximately one meter (Claim 12).
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 – 6, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Martinez Santiago (WO 96/34164) in view of Barrett (USPN 4,406,099) and Calkins (USPGPub 2012/0183726 A1).
Martinez Santiago discloses a device for covering a surface (Figures; Abstract), the device (Figures) comprising: a laminated assembly (Figures) comprising a first adhesive layer (Figure 2, #5), a substrate layer (Figure 2, #3), a second adhesive layer (Figure 2, #4), and a finish layer (Figure 2, #2), wherein the first adhesive layer is disposed on a first side of the substrate layer for use in bonding the laminated assembly to an underlying surface (Abstract, Objection of the Invention), wherein the second adhesive layer is disposed on a second side of the substrate layer and between the substrate layer and the finish layer (Figure 2, #2 – 4); and wherein at least one or both of the substrate layer and the finish layer of the laminated assembly are divided into discontinuous segments separated by cut lines that extend between the discontinuous segments (Figure 3, Abstract) as in claim 1. With respect to claim 2, the substrate layer comprises at least one of a foam layer, a polymeric sheet layer, or a film layer (Page 3, Description of Invention, lines 18 – 36, acrylic pad). Regarding claim 3, the substrate layer is bonded to the finish layer by the second adhesive layer (Figure 2, #2 and 4). For claim 4, the finish layer comprises at least one of a simulated wood surface (Abstract). In claim 5, adjacent discontinuous segments are separated by a simulated flooring joint. (Figures, 3 and 4, wherein the cuts simulate a joint.) With regard to claim 6, the discontinuous segments comprise six discrete segments, each of which is configured to simulate a wood plank (Abstract; Figure 3, #15). Regarding claim 9, a protective liner bonded to the first adhesive layer (Figure 2, #6). However, Martinez Santiago fail to disclose a combination of the substrate layer and the finish layer of the laminated assembly is divided into discontinuous segments separated by cut lines that extend between the discontinuous segments, a flexible carrier layer bonded to the finish layer by a third adhesive layer, wherein the flexible carrier layer and the third adhesive layer are configured to retain the discontinuous segments in a fixed spatial alignment, and wherein the third adhesive layer is configured to cleanly detach from the finish layer by manual peeling, and flexible carrier layer has a plurality of apertures.
Barrett teaches a device (Figures; Abstract) comprising: a substrate having a first side and a second side (Figures 1 and 2, #10), the substrate having a plurality of discontinuous segments (Figures 1 and 2, #12), and a carrier layer of flexible film bonded to the finish layer by an adhesive, wherein the second adhesive is configured to cleanly disbond from the finish layer by manual peeling, and wherein the second adhesive configured to retain the plurality of discontinuous segments in fixed spatial alignment (Figures 1 and 2, #14, 16, and 18; Column 4, lines 46 – 49’ Column 5, lines 42 – 57), the carrier layer has a plurality of apertures (Figure 1, #17; Figure 2, #19) for the purpose of a plurality of floor covering segments that may be laid on a subfloor while staying protected (Column 2, lines 7 – 13).
Calkins teaches a device for covering a surface (Figures; Abstract) comprising a combination of the substrate layer (Figure 2C, #15) and the finish layer (Figure 2C, #14) of the laminated assembly (Figure 2C, #15, 14, and 17) is divided into discontinuous segments separated by cut lines that extend between the discontinuous segments (Figure 2C, #19a and b; Paragraph 0049) for the purpose allowing the device to be formed into a size to cover a surface (Paragraph 0043).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a plurality of segments held is spatial alignment while being divided into discontinuous segments separated by cut lines that extend between the discontinuous segments in Martinez Santiago in order to a have plurality of floor covering segments that may be laid on a subfloor while staying protected as taught by Barrett and to allow the device to be formed into a size to cover a surface as taught by Calkins.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Martinez Santiago (WO 96/34164) in view of Barrett (USPN 4,406,099) and Calkins (USPGPub 2012/0183726 A1) as applied to claim 1 above, and further in view of Moore (USPN 3,717,247).
Martinez Santiago, as modified with Barrett and Calkins, discloses the claimed device for covering a surface except for the underlying surface comprises at least one of wood, concrete, vinyl, and carpet fiber.
Moore teaches a device for covering a surface (Figures; Abstract), wherein the underlying surface comprises at least one of wood, vinyl, or concrete (Column 2, lines 2 – 27) for the purpose of quickly installing a flooring surface (Column 2, lines 40 – 52).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a subfloor in the modified Martinez Santiago in order to quickly install a flooring surface as taught by Moore.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Martinez Santiago (WO 96/34164) in view of Barrett (USPN 4,406,099) and Calkins (USPGPub 2012/0183726 A1) as applied to claim 1 above, and further in view of Stout (USPN 3,077,059).
Martinez Santiago, as modified with Barrett and Calkins, discloses the claimed device for covering a surface except for laminated assembly has a width of approximately one meter.
Stout teaches a device for covering a surface (Figures; Abstract), wherein the laminated assembly has a width of approximately one meter (Column 2, lines 56 – 57) for the purpose of giving the device the desired appearance (Column 2, lines 57 – 59).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a width of approximately one meter in the modified Martinez Santiago in order to give the device the desired appearance as taught by Stout.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Martinez Santiago (WO 96/34164) in view of Barrett (USPN 4,406,099) and Calkins (USPGPub 2012/0183726 A1) as applied to claim 1 above, and further in view of Smith (EP 0 569 921 A1).
Martinez Santiago, as modified with Barrett and Calkins, discloses the claimed device for covering a surface except for finish layer comprises a printed image, and the first adhesive layer comprises a dry adhesive.
Smith teaches a device for covering a surface (Figures; Abstract), wherein the finish layer comprises a printed image (Abstract), and the first adhesive layer comprises a dry adhesive (Page 4, lines 15 – 23, wherein the adhesive is activated with heat or water) for the purpose of having a device that may be adhered to most surfaces (Page 3, lines 13 – 14).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a dry adhesive in the modified Martinez Santiago in order adhered to the device to most surfaces as taught by Smith.
Response to Arguments
Applicant’s arguments with respect to claims 1 - 12 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to Applicant’s argument that the prior art fails to disclose “a combination of the substrate layer and the finish layer of the laminated assembly is divided into discontinuous segments separated by cut lines that extend between the discontinuous segments”, please see the newly presented rejection in view of Calkins
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 Patricia L Nordmeyer whose telephone number is (571)272-1496. The examiner can normally be reached 10am - 6:30pm EST, Monday - Friday.
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/Patricia L. Nordmeyer/
Primary Examiner
Art Unit 1788
/pln/Primary Examiner, Art Unit 1788 March 19, 2026