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 .
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 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of copending Application No. 18811015 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the combination of the dependent and independent copending claims do teach all of the limitations of the instant independent claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Foxall USPA_20090047464_A1 in view of Love USPA_20170037567_A1.
1. Regarding Claims 1, 2, 8, 9, 14, 10, 11, 18, 20-24, Foxall discloses a carpet (corresponds to claimed mat) that rests upon a floor (corresponds to claimed support surface) having a foam base layer (corresponds to claimed second layer) having an upper surface that is bonded to another foam upper layer (corresponds to claimed first layer) (Abstract).
2. However, Foxall does not disclose claimed magnets. Foxall discloses recesses (corresponds to claimed preformed reliefs) (Foxall Fig. 1B).
3. Love discloses a floor mat that contains a textile and base components (corresponds to two distinct layers) that can be attached to one another by use of magnets that are provided in between said layers such that they are encapsulated between them (Abstract, Fig. 1B). The areas between them will correspond to the claimed channels of instant Claims 21-24.
4. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the foam layers, of Foxall, by using magnets between them, as disclosed by Love. One of ordinary skill in the art would have been motivated in doing so for greater adhesion.
5. As for the claimed predetermination of location of the magnets, the Examiner respectfully submits it would have been obvious to select locations that are attracted to magnets on the surface. As for the claimed ferromagnetic connection member limitation, this pertain to the floor, not the actual mat to which the product claim is directed to.
6. Regarding Claims 3-5, 16, 19, Foxall in view of Love suggests that the layers can be made of polyethylene (Foxall: Abstract) or EPDM (Love: paragraph 0045).
7. Regarding Claims 6, although not explicitly stated, it is well known to form floor mats according to the shape of the flooring upon which it rests.
8. Regarding Claims 7, 12, 17, Foxall in view of Love suggests using an adhesive (Foxall: paragraph 0041). All other limitations of instant Claim 24 have been rejected above under the rejection of instant Claim 1.
9. Regarding Claims 8, Foxall in view of Love suggests delineates its mat being a single piece (Foxall: Figures).
10. Regarding Claims 9 and 17, Foxall in view of Love suggests using a plastic layer (Foxall: paragraph 0005) that can correspond to the claimed reinforcement layer. By virtue of having this additional layer, it will inherently provide, to some degree, a prevention of tearing in the other two layers. All other limitations of instant Claim 17 have been rejected above under the rejection of instant Claim 1.
11. Regarding Claims 13, 15, a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) See MPEP 2114. The claimed limitation of ferromagnetic connection pertains to the support surface and the marine vehicle; both of which are not directed to the product claim of the mat. The remainder of instant Claim 11’s limitations have been rejected under the rejection of instant Claim 1 above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAHSEEN KHAN whose telephone number is (571)270-1140. The examiner can normally be reached Mondays-Saturdays 08:00AM-10:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 5712701547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAHSEEN KHAN/Primary Examiner, Art Unit 1781 July 28, 2026
