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 11/20/2024 are pending and herewith considered as indicated below. Claims 1-29 have been canceled as of 11/20/2024.
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 30-49 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.
In regards to Claim 30, “the printed thermoplastic film” as used in line 7 lacks proper
antecedent basis. It appears “the printed thermoplastic film” is intended to recite “the thermoplastic film”.
In regards to Claim 32, “the extruded substrate” as used in line 2 lacks proper antecedent basis. It appears “the extruded substrate” is intended to recite “the substrate”.
In regards to Claims 31, 33-49 rejected due to dependency on rejected independent claim 1.
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 printed 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 printed 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 printing further comprising 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 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 extruded 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 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 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. See PTO 892.
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.
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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.
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/Z.K.A./Examiner, Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635
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