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 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 6-11 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.
Regarding Claim 6, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation “a cured aminoplast as adhesion promoter composition,” and the claim also recites “preferably a urea resin, a melamine resin and/ or a melamine urea resin,” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Examiner considers the claim to require only the broad limitation.
Regarding Claim 7, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7 recites the broad recitation “a cured acrylate-based adhesion promoter composition,” and the claim also recites “in particular a polyurethane-modified acrylate-based adhesion promoter composition,” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Examiner considers the claim to require only the broad limitation.
Regarding Claim 8, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 8 recites the broad recitation “the adhesion promoter composition comprises dipentaerythritol . . . triacrylate,” and the claim also recites “preferably in a mass ratio of 1:2 to 3:1,” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Examiner considers the claim to require only the broad limitation.
Claim 8 recites the limitation “ethoxylated trimethylpropane triacrylate.” The limitation is indefinite, because it is not a recognized compound, and it is not clear whether it is a misspelling of “ethoxylated trimethylolpropane triacrylate,” which is known (CAS No. 15625-89-5). Examiner considers the limitation equivalent to “ethoxylated trimethylolpropane triacrylate” (also known as TMPTA).
Claim 9 recites the limitation “the adhesion promoter composition comprises water.” The limitation is indefinite, because it is not clear what is meant by the cured acid-curable and/or radiation -curable adhesion promoter composition comprising water, since Claim 5, from which it depends requires the composition to be cured. The specification describes an adhesion promoter composition comprising water, and does not describe a cured adhesion promoter composition comprising water as claimed. Because a panel with a cured adhesion promoter layer, not an uncured or liquid adhesion promoter material for forming a cured adhesion promoter layer, any liquid precursor materials of the cured adhesion promoter layer are not given patentable weight. Therefore, the presence or absence of water in a precursor to the cured layer is not considered probative of patentability and Claim 9 is considered met by the cured adhesion promoter layer of Claim 5.
Claim 9 recites the limitation “comprises water and optionally 2-butoxyethanol . . ., and/ or reaction mass of 5 chloro-2methyl-4-isothiazolin-3-one and 2-methyl-2H-isothiazol-3-one.” The limitation is indefinite, because it is not clear what components are optional or which components are part of a reaction mass. Examiner considers the limitation to require water and every composition following the word “optionally” to be optional.
Regarding Claim 10, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation “a cured top lacquer,” and the claim also recites “in particular a cured radiation-curable top lacquer,” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Examiner considers the claim to require only the broad limitation.
Regarding Claim 11, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation “a cured acrylate-based top lacquer,” and the claim also recites “in particular a cured polyurethane-modified acrylate based top lacquer,” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Examiner considers the claim to require only the broad limitation.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-6 and 9-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Clement et al. (US 2012/0213973).
Regarding Claims 1 and 10, Clement et al. (US’973) teach a panel comprising a structured top coat surface (see impressions 27 formed by press elements 25, Fig. 2, [0079]), including a base panel (board 1, substrate 2), a melamine resin layer 16A [0068-0069], an adhesion promoter layer 16B [0070] and a top coat, including melamine resin [0070,0074] (i.e. additional layers 16B of melamine-resin [0070]), wherein the melamine resin layer 16A is disposed on a surface of the base panel 2, the adhesion promoter layer 16B is disposed on the melamine resin layer 16A and the top coat (cured) is disposed on the adhesion promoter layer, wherein the top coat comprises a structure after all layers are applied and pressed (Figs. 1-3; Clam 14; [0074,0078]). NOTE: the term “lacquer” is interpreted as not limited to a liquid composition, including a solvent and resin(s), but also includes dry layers including resin compositions, which are capable of being formed from lacquer compositions; this interpretation is consistent with Claim 10, which recites a cured lacquer. Thus, layers 16A, 16B, including additional layers 16B (i.e. top coat) can all be considered “lacquer-containing” layers. Nevertheless, US’973 also teaches that the layers can be formed from lacquer [0016].
Regarding Claim 2, US’973 teaches that the base panel comprises a decorative layer (print 12) comprising a decoration [0066], and wherein the melamine resin layer 16A is disposed on the decorative layer (Fig. 2).
Regarding Claim 3, in US’973, the structure of the lacquer-containing top coat is synchronous with (”correspond to”) the decoration of the decorative layer at least in partial areas (Fig. 2; [0047]).
Regarding Claim 4, US’973 teaches that the base panel comprises edges adjacent to the surface, and the top-coat containing melamine, which can be applied as a lacquer, is additionally disposed on the edges, since the panel 1 on which the layers, including melamine, can be divided into smaller panels 5, which then have edges, including the layers with top coat, containing melamine (Fig. 3; [0082]).
Regarding Claim 5, US’973 teaches that the adhesion promoter layer comprises a cured acid-curable and/ or radiation-curable adhesion promoter composition (Abstract; [0010,0016,0040-0042,0069,0080]).
Regarding Claim 6, US’973 teaches that the adhesion promoter composition comprises a cured aminoplast (e.g. melamine, urea, urea formaldehyde, melamine formaldehyde) (Claim 7; [0042,0069-0070]).
Regarding Claim 9, US’973 teaches a cured adhesion promoter composition as required by Claim 5 from which Claim 9 depends, and the limitation in Claim 9 of the adhesion promoter composition of a panel with a surface that has been structured is inconsistent with the requirement that it contain water. The composition of an uncured adhesion promoter composition is not given patentable weight for the claimed product, which requires a cured adhesion promoter composition. Nevertheless, US’973 also teaches forming layers from a lacquer comprising water (Claim 8; [0021,0023]).
Regarding Claim 11, US’973 teaches that the composition of a top coat comprises a cured acrylic lacquer (Claim 8; [0021]).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clement et al. (US 2012/0213973) in view of Stvan et al. (US 4,125,678).
Regarding Claims 7-8, US’973 teaches that the adhesion promoter composition can comprise an acrylic lacquer (Claim 8; [0021]) and also a radiation-curable lacquer (Abstract). US’973 fails to teach specifically dipentaerythritol acrylate. Stvan et al. (US’678) is well-known and old (published 1978) analogous art, in the field of radiation curing compositions, including as coatings of a variety of substrates, including wood (Abstract; col. 1, lines 59-68), and suggests that dipentaerythritol acrylate is an acrylate among hydroxy-containing acrylates useful as a polymerizable component in radiation curable coatings, because they can cure in a relatively short time (col. 1, lines 24-45; col. 5, lines 12-25). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the panel of US’973 by including a dipentaerythritol acrylate as the radiation-curable component and/ or acrylate in a radiation curable and/ or acrylate containing adhesion promoter composition used to form the adhesion promoter layer, because dipentaerythritol acrylate has been known for about 50 years or more as a radiation curable component of coatings for substrates, including wood, and US’678 suggests that the acrylate belongs to a category of hydroxy-containing acrylates which cure in a relatively short period of time. NOTE: uncured precursor compositions are not given significant patentable weight for the cured adhesion promoter layer of the claimed panel. Nevertheless, US’678 provides evidence that a cured adhesion promoter layer containing a cured polymer product of dipentaerythritol acrylate would have been an obvious modification of the panel of US’973.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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 Cleveland can be reached at 571-272-1418. 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.
ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712