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 .
Status of Claims
Claims 30-49 as filed on 06/29/2026 are pending and herewith considered as indicated below. Claims 1-29 have been canceled as of 11/20/2024.
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.
Claims 30-31, 34-35, 37, 41-45 and 47 are rejected under 35 U.S.C. 103 as being unpatentable over Josefsson et al. (US-20220063167-A1)(Herein Josefsson) in view of Eddy Alberic Boucke (WO-2023126442-A1)(Herein Boucke).
In regards to Claim 30, Josefsson discloses
A method to produce a board element [Abstract] (1) [Fig 1a], comprising:
extruding a substrate (1’) [Fig 1a] [0072] comprising one or more substrate layers (1’) [Fig 1a] [0072] through a die (22’) [Fig 1a],
laminating [0074] a thermoplastic film [Unnumbered, Fig 1a] (see examiners comment) [0074, 0100] to a first surface [Upper surface of (1’)] [Fig 1a] of the substrate (1’) [Fig 1a] [0072] after [As shown in Fig 1a, the roller (23) laminates the film (unnumbered) after the substrate passes through the die (22’), see paragraph 0072-0074] the substrate (1’) [Fig 1a] [0072] has passed the die (22’) [Fig 1a].
However, Josefsson fails to disclose
printing by a digital printing device a décor on a surface of the thermoplastic film when the thermoplastic film has been laminated to the substrate, and
applying a coating directly on the thermoplastic film after printing.
Furthermore, Boucke discloses
printing [Step C, Page 2, Lines 5-6] by a digital printing device [Step C, Page 2, Lines 5-6] a décor [Step C, “selected digital image”, Page 2, Lines 5-6] on a surface of the thermoplastic film [Unnumbered, Fig 1a, Josefsson] (see examiners comment) [0074, 0100] when the thermoplastic film [Unnumbered, Fig 1a, Josefsson] (see examiners comment) [0074, 0100] has been laminated [0074, Josefsson] to the substrate (1’, Josefsson) [Fig 1a] [0072], and
applying a coating [Step D1, “applying a curable liquid base layer”, Page 6, Lines 17-19] directly on the thermoplastic film [Unnumbered, Fig 1a, Josefsson] (see examiners comment) [0074, 0100, Josefsson] after printing [Step C, Page 2, Lines 5-6] [Since Step D occurs After Step C, Intended].
Based on the prior art relied upon above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of producing a board element by Josefsson to further include printing by a digital printing device a décor on a surface of the thermoplastic film when the thermoplastic film has been laminated to the substrate, and applying a coating directly on the printed thermoplastic film after printing as disclosed by Boucke. When modified, the printing and applying a coating with all limitations allows for printing decorative laminated panels [as intended by Boucke, see Abstract] and furthermore protecting the decorative laminate, allowing ease of manufacturing and installation.
In regards to Claim 31, Josefsson as modified discloses
The method [Abstract] according to claim 30, wherein the thermoplastic film [Unnumbered, Fig 1a] (see examiners comment) [0074, 0100] is laminated [0074] to the substrate (1’) [Fig 1a] [0072] by heat and pressure [0072, “The roller arrangement 23 may comprise a hot roller” additionally one of ordinary skill in the art would know a roller applies pressure in order to obtain lamination].
In regards to Claim 34, Josefsson as modified discloses
The method [Abstract] according to claim 30, wherein the thermoplastic film [Unnumbered, Fig 1a] (see examiners comment) [0074, 0100] is laminated [0074] to the substrate (1’) [Fig 1a] [0072] as a continuous web [Fig 1a, showing cutting (12) after thermoplastic film lamination].
In regards to Claim 35, Josefsson as modified discloses
The method [Abstract] according to claim 30, wherein the substrate (1’) [Fig 1a] [0072] is in continuous form [Fig 1a, showing cutting (12) after thermoplastic film lamination] when the thermoplastic film [Unnumbered, Fig 1a] (see examiners comment) [0074, 0100] is laminated [0074] to the substrate (1’) [Fig 1a] [0072].
In regards to Claim 41, Josefsson as modified discloses
The method [Abstract] according to claim 30, wherein the digital printing device [Step C, Page 2, Lines 5-6, Boucke] is an inkjet printer [Page 7, Line 19 “To be applied by digital printing, such as inkjet-printing” and Page 5, Lines 32-34, Boucke].
In regards to Claim 42, Josefsson as modified discloses
The method [Abstract] according to claim 30 wherein the printing further comprises digitally printing an embossed structure [Step D2 “preferably printing, a liquid embossing ink” Page 6, Line 20, Boucke]. on the thermoplastic film [Unnumbered, Fig 1a] (see examiners comment) [0074, 0100] when the thermoplastic film [Unnumbered, Fig 1a] (see examiners comment) [0074, 0100] has been laminated [0074] to the substrate (1’) [Fig 1a] [0072].
In regards to Claim 43, Josefsson as modified discloses
The method [Abstract] according to claim 30, further comprising, after the thermoplastic film [Unnumbered, Fig 1a] (see examiners comment) [0074, 0100] has been laminated [0074] to the substrate (1’) [Fig 1a] [0072], dividing [Via (12), Fig 1a] [0089] the board element (1’) [Fig 1a] into board element members or panels (1) [Fig 1a] [0089] and providing the board element members or panels (1) [Fig 1a] [0089] with a mechanical locking system (13) [Fig 1a]
In regards to Claim 44, Josefsson as modified discloses
The method [Abstract] according to claim 30, further comprising conveying the substrate (1’) [Fig 1a] [0072] between at least two rollers (23) [Fig 1a] after the substrate (1’) [Fig 1a] [0072] has passed the die (22’) [Fig 1a].
In regards to Claim 45, Josefsson as modified discloses
The method [Abstract] according to claim 44, wherein the thermoplastic film [Unnumbered, Fig 1a] (see examiners comment) [0074, 0100] is laminated to the substrate (1’) [Fig 1a] [0072] by at least one of said rollers (23’, 23) [Fig 1a][0072].
In regards to Claim 47, Josefsson as modified discloses
The method [Abstract] according to claim 30, further comprising conveying the substrate (1’) [Fig 1a] [0072] through at least one cooling zone (14) [Fig 1a] [0069 “Finally cooled”]
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Josefsson et al. (US-20220063167-A1)(Herein Josefsson) in view of Eddy Alberic Boucke (WO-2023126442-A1)(Herein Boucke) and Junie Sang (WO-2021133972-A1)(Herein Sang)
In regards to Claim 33, Josefsson as modified discloses
The method [Abstract] according to claim 30,
However, fails to disclose wherein the thermoplastic is pigmented.
Furthermore, Sang discloses
wherein the thermoplastic film [Unnumbered, Fig 1a, Josefsson] (see examiners comment) [0074, 0100] is pigmented [Page 2 of translated document, “Pigmented thermoplastic films, such as PTFE films, can offer UV protection and ease of use but lack drape-ability on contoured areas of structural parts”]
Examiners comment to use of prior art: Additionally, as used in claim 30 above, the décor is printed on the surface of the thermoplastic film.
Based on the prior art relied upon above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method by Josefsson to further include wherein the thermoplastic is pigmented as disclosed by Sang. When modified, Pigmented thermoplastic films, such as PTFE films, can offer UV protection and ease of use but lack drape-ability on contoured areas of structural parts [See Sang, Page 2 of translated document]
Claims 32, 36, 46-49 are rejected under 35 U.S.C. 103 as being unpatentable over Josefsson et al. (US-20220063167-A1)(Herein Josefsson) in view of Eddy Alberic Boucke (WO-2023126442-A1)(Herein Boucke) and Stokes Jr. (US-11007697)(Herein Stokes)
In regards to Claim 32, Josefsson as modified discloses
The method [Abstract] according to claim 30, wherein the thermoplastic film [Unnumbered, Fig 1a] (see examiners comment) [0074, 0100] is laminated [0074] to the substrate (1’) [Fig 1a] [0072] at least partly by heat [Col 15, Lines 3-7, Stokes] [Intended Use] from the substrate (1’) [Fig 1a] [0072] having been extruded.
Based on the prior art relied upon above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method by Josefsson to further include wherein the thermoplastic film is laminated to the substrate at least partly by heat from the extruded substrate as disclosed by Stokes. When modified, the process of lamination using heat from the extruded substrate allows for a stronger and easier adhesion method.
In regards to Claim 36, Josefsson as modified discloses
The method [Abstract] according to claim 30, wherein a temperature on the first surface [Upper surface of (1’)] [Fig 1a] of the substrate (1’) [Fig 1a] [0072] is 120-240 °C [Col 15; Lines 3-12, Stokes] when the thermoplastic film [Unnumbered, Fig 1a] (see examiners comment) [0074, 0100] is laminated [0074] to the first surface [Upper surface of (1’)] [Fig 1a] of the substrate (1’) [Fig 1a] [0072].
In general, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456.
Based on the prior art relied upon above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method by Josefsson to further include wherein a temperature on the first surface of the substrate is 120-240 °C when the thermoplastic film is laminated to the first surface surface of the substrate. as disclosed by Stokes. When modified, the process of lamination using heat from the substrate at the first surface and being 120-240 °C allows for a stronger and easier adhesion method.
Examiners comment in regards to the prior art of Stokes Jr. (US 11007697), Stokes in [Col 15; Lines 3-12] discloses a second preheat temperature of 250° F to 275° F. Converting to Celsius this converts to approx. 121°C to 135°C.
In regards to Claim 46, Josefsson as modified discloses
The method [Abstract] according to claim 44, wherein a temperature on the first surface [Upper surface of (1’)] [Fig 1a] of the substrate (1’) [Fig 1a] [0072] is 130-220˚C [Col 15; Lines 3-12] when the thermoplastic film [Unnumbered, Fig 1a] (see examiners comment) [0074, 0100] is laminated to the substrate (1’) [Fig 1a] [0072].
Based on the prior art relied upon above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method by Josefsson to further include wherein a temperature on the first surface of the substrate is 130-220˚C when the thermoplastic film is laminated to the first surface surface of the substrate. as disclosed by Stokes. When modified, the process of lamination using heat from the substrate at the first surface and being 120-240 °C allows for a stronger and easier adhesion method.
In general, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456.
Examiners comment in regards to the prior art of Stokes Jr. (US 11007697), Stokes in [Col 15; Lines 3-12] discloses a second preheat temperature of 250° F to 275° F. Converting to Celsius this converts to approx. 121°C to 135°C.
In regards to Claim 48, Josefsson as modified discloses
The method [Abstract] according to claim 47, wherein the thermoplastic film [Unnumbered, Fig 1a] (see examiners comment) [0074, 0100] is laminated to the substrate (1’) [Fig 1a] [0072] by at least one roller (23’) [Fig 1a], prior to or after the cooling zone (280, Stokes) [Fig 6] [Col 13; Line 36].
In regards to Claim 49, Josefsson as modified discloses
The method [Abstract] according to claim 47, wherein a temperature on the first surface [Upper surface of (1’)] [Fig 1a] of the substrate (1’) [Fig 1a] [0072] is 120-180˚C [Col 15; Lines 3-12] when the thermoplastic film [Unnumbered, Fig 1a] (see examiners comment) [0074, 0100] is laminated to the substrate (1’) [Fig 1a] [0072].
Based on the prior art relied upon above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method by Josefsson to further include wherein a temperature on the first surface of the substrate is 120-180˚C when the thermoplastic film is laminated to the first surface of the substrate. as disclosed by Stokes. When modified, the process of lamination using heat from the substrate at the first surface and being 120-240 °C allows for a stronger and easier adhesion method.
In general, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456.
Examiners comment in regards to the prior art of Stokes Jr. (US 11007697), Stokes in [Col 15; Lines 3-12] discloses a second preheat temperature of 250° F to 275° F. Converting to Celsius this converts to approx. 121°C to 135°C.
Claims 37-38 are rejected under 35 U.S.C. 103 as being unpatentable over Josefsson et al. (US-20220063167-A1)(Herein Josefsson) in view of Eddy Alberic Boucke (WO-2023126442-A1)(Herein Boucke) and Van Vlassenrode (WO-2023047290-A1)(Herein Vlassenrode)
In regards to Claim 37, Josefsson as modified discloses
The method [Abstract] according to claim 30
However, Josefsson fails to disclose
wherein a thickness of the thermoplastic film or exceeds 0.05 mm.
Furthermore, Vlassenrode discloses
wherein a thickness of the thermoplastic film [Unnumbered, Fig 1a, Josefsson] (see examiners comment) [see page 6 of translated document, “According to a practical embodiment, it is possible that the intermediate layer has a thickness between 0.5 and 2.0 mm”] is or exceeds 0.05 mm.
Based on the prior art relied upon above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method by Josefsson to further include wherein a thickness of the thermoplastic film or exceeds 0.05 mm as disclosed by Vlassenrode. When modified, the sizing of the thermoplastic film allows for increased durability, protection, flexibility and handling.
In general, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
In regards to Claim 38, Josefsson as modified discloses
The method [Abstract] according to claim 30,
However, fails to disclose
wherein the substrate comprises at least one substrate layer being laminated to the substrate after extrusion, such that the substrate comprises one or more extruded substrate layers and at least one laminated substrate layer.
Furthermore, Vlassenrode discloses
wherein the substrate (1’, Josefsson) [Fig 1a] [0072] comprises at least one substrate layer (2) [Fig 10] being laminated [See translated document, Page 7, “laminating a top layer”] to the substrate (1’, Josefsson) [Fig 1a] [0072] after extrusion [See translated document page 7, “extruding a primary substrate layer, extruding an intermediate layer, extruding and/or laminating a secondary substrate layer”], such that the substrate [Fig 1a, Josefsson] [0072] (1, Kawanishi) [Fig 10] comprises one or more extruded substrate layers (1) [Fig 10] extrusion [See translated document page 7, “extruding a primary substrate layer, extruding an intermediate layer, extruding and/or laminating a secondary substrate layer”] and at least one laminated substrate layer (2) [Fig 10] extrusion [See translated document page 7, “extruding a primary substrate layer, extruding an intermediate layer, extruding and/or laminating a secondary substrate layer”]
Based on the prior art relied upon above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method by Josefsson to further include wherein the substrate comprises at least one substrate layer being laminated to the substrate after extrusion, such that the substrate comprises one or more extruded substrate layers and at least one laminated substrate layer as disclosed by Vlassenrode. When modified, the additional substrate layer allows for enhanced durability during the method of creating and while in use whereas one substrate layer is not as durable.
Claims 39-40 are rejected under 35 U.S.C. 103 as being unpatentable over Josefsson et al. (US-20220063167-A1)(Herein Josefsson) in view of Eddy Alberic Boucke (WO-2023126442-A1)(Herein Boucke) and Van Vlassenrode et al. (US-20220213695-A1)(Herein Vlassenrode)
In regards to Claim 39, Josefsson as modified discloses
The method [Abstract] according to claim 30, wherein the thermoplastic film [Unnumbered, Fig 1a] (see examiners comment) [0074, 0100] comprises less than 50 phr plasticizer [0008, Vlassenrode].
Based on the prior art relied upon above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method by Josefsson to further include wherein the thermoplastic film comprises less than 50 phr plasticizer as disclosed by Vlassenrode. When modified, the plasticizer with all limitations allow for enhancing rigidity in the panel [See Vlassenrode Paragraph 0008]
In general, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
In regards to Claim 40, Josefsson as modified discloses
The method [Abstract] according to claim 30, wherein the thermoplastic film [Unnumbered, Fig 1a] (see examiners comment) [0074, 0100] comprises at least one filler [0010-0014, Vlassenrode].
Based on the prior art relied upon above, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method by Josefsson to further include wherein the thermoplastic film comprises at least one filler as disclosed by Vlassenrode. When modified, the filler with all limitations allow for enhancing rigidity and stiffness in the panel [See Vlassenrode Paragraph 0010]
In general, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Response to Arguments
Claim Rejections 35 USC 112: Applicant' s argument with respect to the claims rejected under 35 USC 112 is persuasive and rejection of the claims pursuant to 35 USC 112 is hereby withdrawn.
Claim Rejections 35 USC 103: Applicant' s arguments with respect to all claims have been considered but are not persuasive.
In regards to Claim 30, Applicant iterates Claim 30 requires a specific sequence.
Furthermore, iterating the generic statement "[w]hen modified, the printing and applying a coating with all limitations allows for printing decorative laminated panels [as intended by Boucke, see Abstract] and furthermore protecting the decorative laminate, allowing ease of manufacturing and installation." does not amount to a motivation for the proposed modification of Josefsson. Additionally, the motivation is circular, as it amounts to saying that it would be obvious to print decorative laminated panels, because this would allow one to print decorative laminated panels.
Furthermore, reciting nothing in Bouche suggests that printing after a thermoplastic film has been laminated to an extruded board as claimed, would somehow further protect the decorative laminate or allow ease of manufacturing/installation.
Examiners Response: In regards to the specific sequence, the transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) (“[L]ike the term ‘comprising,’ the terms ‘containing’ and ‘mixture’ are open-ended.”). Invitrogen Corp. v. Biocrest Manufacturing, L.P., 327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir. 2003). MPEP 2111.03(I). The claims are open-ended and other elements are able to be brought in claimed or unclaimed, the term “comprising” is not limiting.
Additionally, as per the office action mailed 06/29/2026 Boucke within the provided abstract discloses “The invention relates to a method for manufacturing personalized or customized decorative laminated panels, in particular decorative floor panels, wall panels, or ceiling panels, for composing a decorative surface covering, in particular a decorative floor covering, wall covering, or ceiling covering.” Which is gathered directly from the prior art of record, one of ordinary skill in the art is able to look at Boucke as a combination reference, the motivation is not circular. Additionally, Boucke discloses on [Page 9, Lines 4-13] “Preferably, the method comprises step G), performed after step D), which comprises applying a top coating on top of the embossing structure. The top coating preferably comprises aluminium oxide used in the present invention is also known as alumina or AI2O3. Preferably, the aluminium oxide is fused or calcined. The fused or calcined aluminium oxide preferably has a desired hardness of from about 6 to about 9 on a Moh's scale, and most preferably about 9 on a Moh's scale. Preferably, the particle size of the aluminium oxide is from about 10 microns to about to about 70 microns, and more preferably from about 20 microns to about 50 microns. The presence of alumina provides improved wear and/or stain resistance to the surface covering.” Which is directly perceived in the prior art and again one of ordinary skill in the art is able to look at Boucke as a combination reference and come to the same conclusion.
In regards to Claim 32, Applicate recites claim 32 recites that the thermoplastic film is laminated to the substrate at least partly by heat from the substrate having been extruded. The cited references do not disclose or suggest these features, in combination with the other aspects of claim 30, which claim 32 depends.
Examiners Response: The substrate as generally disclosed by Stokes is heated [see Col 15, Lines 3-7], Stokes discloses that the heating element T1 is between 275 and 235 F and T2 is between 250 and 275 F. To one of ordinary skill in the art, thermoplastic heat lamination is at approx. (210-240 F) depending on thickness. It is intended the heat from the substrate is in combination responsible for lamination. Col 12 lines 14-17 also notes that heat may be applied before, during or after application of the film.
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 ZAKARIA K. AL-ASWAR whose telephone number is (571)272-6335. The examiner can normally be reached M through F 7:30 to 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, Brian Mattei can be reached at 571-270-3238. 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.
/Z.K.A./Examiner, Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635
Prosecution Insights