DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant’s election without traverse of Group I, Species 7 in the reply filed on 08/17/2026 is acknowledged.
Claim 22 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/17/2026.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 13/596,988, filed on 08/28/2012.
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 2-9, 11, 12, and 14-21 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over JP 2006-118337 to Furuichi (“Furuichi”) in view of U.S. Publication No. 2004/0211144 to Stanchfield (“Stanchfield”) and U.S. Publication No. 2005/0108969 to Whitaker (“Whitaker”). All reference numerals are made with respect to Furuichi unless otherwise noted.
Regarding claim 2, Furuichi in Figs. 5c and 10 discloses floor panels comprising a locking system 6, 6b for vertical and/or horizontal locking of a first edge and a second edge of adjacent floor panels, the adjacent floor panels comprising a wear layer 3 and one or several plastic core layers 2, 2a-2d, the one or several plastic core layers comprising a plastic material (Furuichi in par 0017 of the machine translation discloses that the core layer can be laminated hard resin with MDF), wherein one plastic core layer comprises several essentially vertical flexing grooves 5, the vertical flexing grooves being formed at a rear side 2f of the plastic core layer, wherein the vertical flexing grooves are arranged in a plurality of rows along a longitudinal direction of the floor panels (two rows of grooves 5 in Fig. 5c), each row comprising a plurality of vertical flexing grooves 5.
Furuichi does not disclose that the wear layer comprises a plastic material and wherein opposing walls of the vertical flexing grooves comprise a vertically tapering portion, the opposing walls including the vertically tapering portion extending along a longitudinal direction of the floor panels and/or along a transverse direction of the floor panels.
Stanchfield discloses a wear layer comprising a plastic material that is polyvinyl chloride to provide a watertight wear layer (Stanchfield par 0029). It would have been obvious to one having ordinary skill in the art at the time of invention to use a plastic material such as polyvinyl chloride for the wear layer, since 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, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Whitaker in Fig. 6 discloses a floor panel comprising grooves (Whitaker 6) that facilitate flexibility of the panel, wherein the grooves can have various shapes (Fig. 6) including opposing walls that comprise a vertically tapering portion (upwardly diagonal straight or curved walls in Fig. 6) extending along a longitudinal direction of the floor panels and/or along a transverse direction of the floor panels. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the floor rpanel of Furuichi to have grooves wherein the opposing walls include a vertically tapering portion extending along a longitudinal direction of the floor panels and/or along a transverse direction of the floor panels as taught in Whitaker with a reasonable expectation of success because it would provide a floor panel with a desired amount of flexibility.
Regarding claim 3, Furuichi in view of Stanchfield and Whitaker discloses that the vertically tapering portion is planar (see Fig. 6 – right most groove 6).
Regarding claim 4, Furuichi in view of Stanchfield and Whitaker discloses that the vertically tapering portion is curved (see Fig. 6, curved groove 6).
Regarding claim 5, Furuichi in view of Stanchfield and Whitaker discloses that the vertically tapering portion is a vertically inner portion of the vertical flexing grooves 6.
Regarding claim 6, Furuichi in view of Stanchfield and Whitaker discloses that the vertically tapering portion is a vertically outer portion of the vertical flexing grooves 6.
Regarding claim 7, Furuichi in view of Stanchfield and Whitaker discloses that the entire opposing walls of the vertical flexing grooves 6 continuously taper from the rear side to a vertically inner portion of the vertical flexing grooves.
Regarding claim 8, Furuichi in view of Stanchfield and Whitaker discloses that the vertical flexing grooves 6 have a vertical extension of at least about one third of a thickness of the plastic core layer.
Regarding claim 9, Furuichi in view of Stanchfield and Whitaker discloses that the vertical flexing grooves are formed with rotating jumping tools or with knives (see Abstract).
Regarding claims 11 and 12, Furuichi in view of Stanchfield and Whitaker does not disclose that plastic core layer comprises recycled material from cut-off material from the forming of vertical flexing grooves at rear sides of floor panels. It would have been obvious to one having ordinary skill in the art at the time of invention to use recycled material from cut-off material from the forming of vertical flexing grooves at rear sides of floor panels, since 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, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Regarding claim 14, Furuichi in view of Stanchfield and Whitaker discloses that the vertical flexing grooves are covered with an underlay 30.
Regarding claim 15, Furuichi in view of Stanchfield and Whitaker does not disclose that the underlay is a foam. It would have been obvious to one having ordinary skill in the art at the time of invention to use foam, since 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, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). Foam predictably provides cushioning.
Regarding claim 16, Furuichi in view of Stanchfield and Whitaker discloses that a length of the vertical flexing grooves 6 is smaller than a length of the rear side (see Fig. 5c).
Regarding claim 17, Furuichi in view of Stanchfield and Whitaker discloses that the vertical flexing grooves 6 are essentially parallel with long edges of the floor panels, the vertical flexing grooves having a longitudinal length that is smaller than a longitudinal length of the rear side of the plastic core layer.
Regarding claim 18, Furuichi in view of Stanchfield and Whitaker does not disclose that the floor panels comprise one or several separate layers of glass fiber. It would have been obvious to one having ordinary skill in the art at the time of invention to use glass fiber, since 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, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). Glass fiber predictably provides a durable weather resistant material.
Regarding claim 19, Furuichi in view of Stanchfield and Whitaker discloses that vertical flexing grooves 6 in adjacent rows extend side by side along the longitudinal direction (see Fig. 5c).
Regarding claim 20, Furuichi in view of Stanchfield and Whitaker does not disclose that the vertical flexing grooves in adjacent rows are offset with respect to each other along the longitudinal direction. It would have been obvious to place the grooves in offset rows because the rearrangement of parts is generally recognized as being within the level of ordinary skill in the art and such placement would not alter the performance of the device. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Regarding claim 21, Furuichi in view of Stanchfield and Whitaker discloses that a length of the vertical flexing grooves is smaller than a distance between locking systems on short edges of the floor panels (See Fig. 5c).
Claim 13 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Furuichi in view of Stanchfield and Whitaker as applied in claim 2 above and further in view of U.S. Patent No. 8,544,232 to Wybo et al. (“Wybo”).
Regarding claim 13, Furuichi in view of Stanchfield and Whitaker does not disclose that said plastic wear layer comprises polyvinyl chloride and wherein said one or several plastic core layers comprise polyvinyl chloride and fillers. Wybo discloses that a core for a floor panel comprises polyvinyl chloride and fillers (Wybo col 4, ln 10-22 and col 11, ln 20-31). It would have been obvious to one having ordinary skill in the art at the time of invention to use polyvinyl chloride for the wear layer and polyvinyl chloride with fillers for the core, since 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, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
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.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 10,066,400 in view of Whitaker. Claim 15 of the ‘400 patent discloses each element in the instant claims except where the vertical flexing grooves comprise opposing walls including vertically tapering portion extending along a longitudinal or transverse direction of the floor panel. Whitaker in Fig. 6 discloses a floor panel comprising grooves (Whitaker 6) that facilitate flexibility of the panel, wherein the grooves can have various shapes (Fig. 6) including opposing walls that comprise a vertically tapering portion (upwardly diagonal straight or curved walls in Fig. 6) extending along a longitudinal direction of the floor panels and/or along a transverse direction of the floor panels. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the floor panel to have grooves wherein the opposing walls include a vertically tapering portion extending along a longitudinal direction of the floor panels and/or along a transverse direction of the floor panels as taught in Whitaker with a reasonable expectation of success because it would provide a floor panel with a desired amount of flexibility.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16 of U.S. Patent No. 10,669,724. Claim 16 of the ‘724 patent discloses each element in the instant claims except where the vertical flexing grooves comprise opposing walls including vertically tapering portion extending along a longitudinal or transverse direction of the floor panel. Whitaker in Fig. 6 discloses a floor panel comprising grooves (Whitaker 6) that facilitate flexibility of the panel, wherein the grooves can have various shapes (Fig. 6) including opposing walls that comprise a vertically tapering portion (upwardly diagonal straight or curved walls in Fig. 6) extending along a longitudinal direction of the floor panels and/or along a transverse direction of the floor panels. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the floor panel to have grooves wherein the opposing walls include a vertically tapering portion extending along a longitudinal direction of the floor panels and/or along a transverse direction of the floor panels as taught in Whitaker with a reasonable expectation of success because it would provide a floor panel with a desired amount of flexibility.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 11,649,642. Claim 13 of the ‘724 patent discloses each element in the instant claims except where the vertical flexing grooves comprise opposing walls including vertically tapering portion extending along a longitudinal or transverse direction of the floor panel. Whitaker in Fig. 6 discloses a floor panel comprising grooves (Whitaker 6) that facilitate flexibility of the panel, wherein the grooves can have various shapes (Fig. 6) including opposing walls that comprise a vertically tapering portion (upwardly diagonal straight or curved walls in Fig. 6) extending along a longitudinal direction of the floor panels and/or along a transverse direction of the floor panels. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the floor panel to have grooves wherein the opposing walls include a vertically tapering portion extending along a longitudinal direction of the floor panels and/or along a transverse direction of the floor panels as taught in Whitaker with a reasonable expectation of success because it would provide a floor panel with a desired amount of flexibility.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,209,417 in view of Whitaker. Claim 13 of the ‘417 patent discloses each element in the instant claims except where the vertical flexing grooves comprise opposing walls including vertically tapering portion extending along a longitudinal or transverse direction of the floor panel. Whitaker in Fig. 6 discloses a floor panel comprising grooves (Whitaker 6) that facilitate flexibility of the panel, wherein the grooves can have various shapes (Fig. 6) including opposing walls that comprise a vertically tapering portion (upwardly diagonal straight or curved walls in Fig. 6) extending along a longitudinal direction of the floor panels and/or along a transverse direction of the floor panels. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the floor panel to have grooves wherein the opposing walls include a vertically tapering portion extending along a longitudinal direction of the floor panels and/or along a transverse direction of the floor panels as taught in Whitaker with a reasonable expectation of success because it would provide a floor panel with a desired amount of flexibility.
Allowable Subject Matter
Claim 10 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and a terminal disclaimer to overcome the double patenting rejection.
The following is an examiner’s statement of reasons for allowance: None of the prior art, alone or in obvious combination absent impermissible hindsight, discloses applicant’s invention of floor panels comprising inter alia vertical flexing grooves that are pressed. The closest prior art to Furuichi discloses grooves 6 to improve flexibility of the panel. While US4131705 to Kubinsky discloses pressing grooves, Kubinsky teaches away in teaching that pressing a groove into a surface, reinforces the groove due to increasing density of core material at the groove. See also Applicant’s Remarks on pages 6-11 in parent application 18/295,559.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE T CAJILIG whose telephone number is (571)272-8143. The examiner can normally be reached M-F 9am-5pm.
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/CHRISTINE T CAJILIG/Primary Examiner, Art Unit 3633
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