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 and 17 are objected to because “two stacked panels” should be --at least two stacked panels--.
Claim 2 is objected to because “spraying an edge sealer” should be --spraying the edge sealer--.
Claim 12 is objected to because “height to be:” should be --height to be at least one of:”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 17 recite spraying “end” surfaces, which is confusing. It is apparently the side surfaces that are sprayed.
Claims 7 recites the limitation "the" gap. There is insufficient antecedent basis for this limitation in the claim as no gap is previously recited. It is assumed the claim depends from claim 6, which does recite “a gap”.
Claim 8 recites the limitation "the" gap. There is insufficient antecedent basis for this limitation in the claim as no gap is previously recited. It is assumed the claim depends from claim 6, which does recite “a gap”.
Claim Rejections - 35 USC § 103
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.
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.
Claims 1-5, 12-14, and 16 - are rejected under 35 U.S.C. 103 as being unpatentable over Niese (6,851,237) in view of Heitmanek (4,894,262).
Niese, fig. 2, teaches a method of manufacturing building-construction panels, comprising:
forming at least two panels, wherein each of the panels includes: opposite top 11 and bottom 12 major surfaces, with two opposite end surfaces extending between them at panel transverse ends, and with two opposite side edge surfaces 13 and 14 extending between them at panel longitudinal sides;
a tongue 17 extending from one of the edge surfaces and a groove 16 recessed into an opposite one of the edge surfaces so that when the two panels are installed positioned flat adjacent to each other the tongue of one panel is matingly received into the groove of the adjacent panel in an inter-engaged arrangement, wherein the edge surfaces include tongue-side upper and lower edges above and below the tongue and groove-side upper and lower edges above and below the groove;
a shoulder (the vertical wall above the undercut shown in fig. 2) formed on the tongue-side lower edge immediately below the tongue and defining a tongue-side abutted surface; and
a groove-side bottom transition (the undercut shown in fig. 2) formed on the groove-side lower edge immediately above the panel bottom major surface, wherein a groove-side abutting surface is defined by the groove-side lower edge above the groove-side bottom transition.
Niese does not teach arranging the panels in a stack with the groove-side bottom transition of one of the stacked panels exposing a portion of one of the major surfaces of an adjacent one of the stacked panels and applying an edge sealer to the two opposite end surfaces of the two stacked panels and to the exposed portion of the major surface of the adjacent stacked panel to protect against later edge swelling during use.
Heitmanek, fig. 3, teaches arranging panels in a stack and applying an edge sealer to two opposite, as best understood, edge surfaces of the stacked panels, abstract, such sealer protecting against later edge swelling during use because of the sealing effect of the sealer. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to arrange the Heitmanek panels in a stack and apply an edge sealer to two opposite surfaces of the stacked panels to seal against water intrusion at the edge. Heitmanek teaches the two opposite edges aligned so that if and when the Niese panels are stacked such that groove-side bottom transition of one of the stacked panels exposes a portion of one of the major surfaces of an adjacent one of the stacked panels, the exposed portion would be sealed. However, the panels are not expressly taught as being so stacked. It would have been a matter of obvious design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to so arrange the panels for maximum coverage, optimizing the orientation of adjacent articles to maximize coating/sealant coverage involving only routine skill in the art.
2. Niese in view of Heitmanek teaches the method of manufacturing building-construction panels of Claim 1, Heitmanek further teaching applying an edge sealer includes spraying the edge sealer.
3. Niese in view of Heitmanek teaches the method of manufacturing building-construction panels of Claim 1, Niese in view of Heitmanek further teaching arranging the panels in a stack includes arranging the panels in a stack with the groove-side bottom transition of one of the stacked panels exposing a portion of the top major surface of a below-adjacent one of the stacked panels, and wherein applying an edge sealer includes applying an edge sealer onto the exposed portion of the top major surface of the adjacent stacked panel because this is essentially the step described in claim 1 in which sealer coverage is optimized.
4. Niese in view of Heitmanek teaches the method of manufacturing building-construction panels of Claim 1, Niese in view of Heitmanek further teaching arranging the building-construction panels manufactured by the method of Claim 1.
5. Niese in view of Heitmanek teaches the building-construction panels of Claim 4, Niese further teaching the panels are capable of use as structural wood subflooring panels capable of being installed laid flat over and mounted down onto flooring joists to form a structural subfloor of a building structure and capable of having a non-structural decorative floor covering installed over it, as the Niese panels are wood “floorboards”.
12. Niese does not expressly teach the abutting surface height to be at least one of the recited dimensions. It would have been a matter of obvious design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to so dimension the height for effective panel locking, optimizing dimensions of an article to maximize strength involving only routine skill in the art.
13. Niese in view of Heitmanek teaches the method of manufacturing building-construction panels of Claim 1, Niese further teaching forming at least two panels includes forming the tongue-side abutted surface height to be at least 50 percent of that of the tongue, see fig. 2. Should Applicant disagree that Niese teaches forming at least two panels includes forming the tongue-side abutted surface height to be at least 50 percent of that of the tongue, it would have been a matter of obvious design choice to one having ordinary skill in the art before the effective filing date of the claimed invention for forming at least two panels to include forming the tongue-side abutted surface height to be at least 50 percent of that of the tongue for strength.
14. Niese in view of Heitmanek teaches the method of manufacturing building-construction panels of Claim 1, Niese further teaching forming at least two panels includes forming the groove-side bottom transition as a slanted or sloped surface, fig. 2.
16. Niese in view of Heitmanek teaches the method of manufacturing building-construction panels of Claim 1, Niese further teaching forming at least two panels includes forming the mating tongue and groove of the two adjacent installed panels to inter-engage to prevent relative movement of the two adjacent of the adjacent panel panels in a direction transverse to a plane of the tongue and groove but do not interlock to prevent the two adjacent of the adjacent panel panels from being moved apart longitudinally in the tongue and groove plan (as seen in fig. 2, the panels are free to mover longitudinally, but not up and down).
Allowable Subject Matter
Claims 6-8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. The claim is allowed because when the two Niese panels are installed together, the groove-side abutting surface does not contact the tongue-side abutted surface with mechanical interference to structurally maintain a gap between the tongue-side and groove-side upper edges of the panel, wherein the tongue-side abutted surface has a height that is greater than a height of the groove-side abutting surface as claimed.
Claims 9-11 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and if the claim included all of the limitations of the base claim and any intervening claims. 9-11. The claim allowed because forming at least two Niese panels does not include forming the tongue-side abutted surface to extend higher and lower than the groove-side abutting surface, as two Niese panels tongue-side abutted surface extend coincident to the groove-side abutting surface.
Claim 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. The claim is allowed because Niese teaches forming at least two panels further comprises forming a tongue-side bottom transition on the tongue-side lower edge immediately above the panel bottom major surface, wherein the shoulder is defined by the edge surface on the tongue-side lower edge above the tongue-side bottom transition, but the groove-side bottom transition does not extend higher than the tongue-side bottom transition.
Claims 17-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL J KENNY whose telephone number is (571)272-9951. The examiner can normally be reached Monday-Friday 8am-5pm.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Lei (10,815,675) teaches it is old in the art to spray sealant on a tongue and grove edge, col. 1, lines 40-41. Schlichter (5,534,295) teaches it is old in the art to spray sealant on panel edges after stacking, fig. 4.
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/DANIEL J KENNY/Examiner, Art Unit 3633
Prosecution Insights