DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This non-final Office action is in response to Applicant’s continuing patent application number 18/989,188 filed on 12/20/2024.
Currently, claims 1-20 are pending and examined.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 12/20/2024 are being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities: page 1, par. [0001], line 2; after “2024” should be inserted -- now U.S. Patent No. 12,385,260 --.
Appropriate correction is required.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” (line 4) and “said,” (line 5) should be avoided.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “means of a lower lip” in at least claim 8.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 pre-AIA the applicant regards as the invention.
Re claim 1, line 9; a citation “these male coupling parts” is confusing and indefinite because it’s unclear whether the same “male coupling parts” cited in line 8? Clarification is required. Claims 2-15 depending upon the rejected claim 1 are also rejected. Independent claim 16, line 9; having the same issues as mentioned; therefore, claims 16-20 are also rejected.
Re claim 2, lines 2, 4; a phrase “which” renders the claim indefinite and confusing because it’s unclear whether “which” referring to which structure? Clarification is required. Claim 16, lines 11, 14; having the same issues as mentioned are also rejected.
Re claim 2, line 2, 4; a conditional phrase “when” renders the claim indefinite because "when" is language that suggests or makes optional the subsequent limitation or limitations. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. See § MPEP 2103 (C). Correction is required. Claim 16, line 11, 14; having the same issues as mentioned are also rejected.
Re claim 3, lines 2, 5; a citation “the type” does not have a proper antecedent basis. Correction is required. Claims 14, 15, 16; having the same issues as mentioned are also rejected.
Re claim 3, lines 2, 5; a citation “can be” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. Correction is required.
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 pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Claim(s) 1-4 and 14-17 is/are rejected under pre-AIA 35 U.S.C. 102(a)(1) as being anticipated by US No. 2005/0210810 to Pervan.
Note, the claimed preamble is sole drawn to a single floor element “A floor element”; any relation with other floor element is a functional and not being given any patentable weight.
Re claims 1, 2, 3, 4, 14, 15, 16, 17: Pervan discloses a floor element for forming a floor covering with a herringbone pattern (par. [0036], line 16), wherein said floor element 1 is rectangular and comprises a first pair of opposite short sides 5a/5b and a second pair of opposite long sides 4a/4b, wherein the floor element 1 at the first pair of opposite short sides 5a/5b as well as at the second pair of opposite long sides 4a/4b, comprises coupling parts 9/10, wherein the coupling parts 9/10 situated at the second pair of opposite long sides 4a/4b are made as a male coupling part 10 and a female coupling part 9 and respectively can cooperate with the female coupling part 9 and the male coupling part 10 of the second pair of opposite long sides 4a/4b of an identical floor element 1’, and wherein both the coupling parts 9/10 at the first pair of opposite short sides 4a are male coupling parts 10/10 designed such that each of these male coupling parts 10/10 can cooperate with the male coupling part as well as with the female coupling part of the second pair of opposite long sides 5a/5b of an identical second floor element 1’ (Figs. 1a,b,c-3a,b,c); wherein all of said coupling parts 9/10 are provided with vertically active locking portions, which, when the coupling parts 9/10 of two of such floor elements 1/1’ cooperate with each other, effect a locking in vertical direction, perpendicular to a plane of the floor covering, and also are provided with horizontally active locking portions, which, when the coupling parts 9/10 of two of such floor elements 1/1’ cooperate with each other, effect a locking in horizontal direction, perpendicular to the said opposite sides and in the plane of the floor covering (see par. [0036]); wherein said coupling parts 9/10 of the second pair of opposite long sides 4a/4b are of the type allowing that two of such floor elements 1/1’ can be connected to each other at said second pair of long sides 4a/4b by a turning movement or a horizontal shifting movement (see Fig. 1b), wherein said coupling parts 9/10 of the first pair of opposite short sides 5a/5b are of the type allowing that two of such floor elements can be connected to each other by a downward movement (par. [0040], line 8); wherein the male coupling parts 10at the first pair of opposite short sides are identical coupling parts 10.
Re claim 8: wherein the male coupling part 10 and the female coupling part 9 of the second pair of opposite long sides 4a/4b are configured as a tongue 10 and a groove 9 delimited by means of a lower lip and an upper lip (see Fig. 2a), wherein the tongue 10 and groove 9 are provided with locking elements 8/12 that prevent the tongue 10 and groove 9 moving apart and wherein the locking elements 8/12 comprise an upright locking element (i.e. at 8) on the lower lip 6 and, interacting therewith, a downward directed locking element 12 on the underside of the tongue 10.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,385,260; over claims 1-20 of U.S. Patent No. 11,933,055; over claims 1-29 of U.S. Patent No. 10,745,921; over claims 1-20 of U.S. Patent No. 10,519,674; over claims 1-20 of U.S. Patent No. 10,358,831; over claims 1-13 of U.S. Patent No. 10,125,499; over claims 1-7 of U.S. Patent No. 9,890,542; over claims 1-15 of U.S. Patent No. 9,695,599; over claims 1-29 of U.S. Patent No. 9,487,957; and over claims 1-26 of U.S. Patent No. 9,366,037. Although the claims at issue are not identical, they are not patentably distinct from each other because all of structures of the instant claims are encompassed within the patented claims. For example: the claimed mapping between the instant claims and patented claims (12,385,260): Instant 1-5, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 18, 19, 20 are equivalent to patented 1, 2, 4, 5, 7, 8, 9, 10, 13, 17; respectively.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (see attached PTO-892).
Contact Information
Any inquiry concerning this communication or earlier communication from the examiner should be directed to CHI Q. NGUYEN whose telephone number is (571) 272-6847. The examiner can normally be reached on Monday-Friday from 7AM-5PM or email: chi.nguyen@uspto.gov. If attempt to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Brian Mattei can be reached at (571) 270-3238. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pairdirect.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at (866) 217-9197.
/CHI Q NGUYEN/
Primary Examiner, Art Unit 3635
PNG
media_image1.png
323
328
media_image1.png
Greyscale
Prosecution Insights