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 .
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No.12,179,468. Although the claims at issue are not identical, they are not patentably distinct from each other. Claims 1-14 are substantially similar, or obvious variations thereof, to claims 1, 1, 1, 5, 1, 7, 11, 1, 1, 1, 1, 1, 8, 1, respectively, of ‘468. Regarding claim 5, annealing is a method of making and the claim is being examined as a finished product.
Claims 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,179,468 in view of US Patent Publication No. US 2018/0290418 to Nelson.
Claims 15 and 17 are substantially similar to claim 1 of ‘468 and [0043] of Nelson. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify ‘468 by using a transparent wear layer as a mere design choice for aesthetic purposes. Regarding thickness, Applicant fails to show criticality for specifically claimed thickness dimensions, therefore it would have been an obvious design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify ‘468 in view of Nelson to use the dimensions such as specified in these claims where larger or smaller dimensions increase strength for a particular function.
Claim 16 is substantially similar to claim 1 of ‘468 and [0004], [0033] of Nelson. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify ‘468 by using thermosetting resin of polypropylene as a means for increasing strength.
Claim 18 is substantially similar to claim 1 of ‘468 and [0044] of Nelson. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify ‘468 to add embossing in order to improve traction.
Regarding claim 19, claim 19 is rejected for reasons cited in the rejection of claim 15. The Applicant should note that a means of curing is a method step and the claim is examined as drawn to the final product.
Regarding claim 20, claim 20 is substantially similar to claim 1 of ‘468 and [0033] of Nelson.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify ‘468 by using a polyurethane coating in order to increase strength.
Allowable Subject Matter
Claims 1-20 are allowable. The prior art of record does not disclose a floor or wall panel comprising a planar top side, a planar bottom side, and at least four substantially linear side edges comprising at least one pair of opposite side edges, the panel comprises at least one extruded and at least partially foamed core layer having a density of at most 1800_kg/m, the at least one extruded and at least partially foamed core layer comprises at least one composite material, comprising at least one mineral filler, and at least one thermoplastic binder selected from the group consisting of polyvinyl chloride, polypropylene, and polyethylene terephthalate, the ratio of mineral filler to thermoplastic binder in the composite material is at least 3:1; and the at least one extruded and at least partially foamed core layer has an average density variation, said average density variation across a lateral width of the at least one extruded and at least partially foamed core layer is within 10%.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Basil Katcheves whose telephone number is (571)272-6846. The examiner can normally be reached Monday-Thursday, 8:00 am to 6:30pm EST.
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/BASIL S KATCHEVES/Primary Examiner, Art Unit 3633
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