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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) and 120 as follows:
A later-filed application, i.e., the present application, must be an application for a patent for an invention which is also disclosed in the prior application(s) (the parent or original nonprovisional application(s) or provisional application(s)), i.e., Application Serial No. 18/410,181 and Provisional Application Serial Nos. 63/492,480 and 63/650,429. The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of two of the prior-filed applications, Application Serial No. 18/410,181 and Provisional Application Serial No. 63/492,480, each fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph the claims of this application. Non-limiting examples of instances in which these prior-filed applications do not contain adequate disclosure with regards to claimed elements in the present application include a foil being available above the underlayment basic layer and potentially below said optional adhesive layer, a thermoplastic material having a melting temperature of 235° C. or lower or of 200° C. or lower, for example of 125° C. to 200° C, a foil of glycol modified PET (PETG) or a foil of polypropylene, for example oriented polypropylene (OPP) being above the underlayment basic layer, the underlayment basic layer having a weight of at least 2 kg/m2, and the underlayment basic layer being essentially free from filler particles having a particle size, as defined by the d50 value of the particle size distribution, larger than 500 micrometer, or, wherein the 95th percentile of the distribution of particle sizes of particles available in said underlayment basic layer is 500 micrometer or less.
However, it is noted that support for these and other limitations that are claimed in this present application do find support in the disclosure of Provisional Application Serial No. 63/650,429. As such, the effective filing date for Claims 1-11 of the present application is the date upon which these claimed concepts were introduced into the disclosure of the chain of parent applications, which is May 22, 2024, the filing date of the 63/650,429 provisional application.
Specification
The disclosure is objected to because of the following informalities:
First, in multiple instances across the Abstract and the Specification, Applicants use the phrase “Moh’s hardness” to define a property of the filler. However, the Mohs hardness scale is named after Friedrich Mohs, and the use of a possessive “Moh’s” is improper. The phrase should be Mohs hardness.
Second, the Specification does not have a CROSS-REFERENCE TO RELATED APPLICATIONS section listing the patent application(s) to which priority is claimed, and the corresponding status of Application Serial No. 18/410,181 as an issued patent.
Appropriate correction is required.
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 1-11 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.
Claim 1 recites the limitation “said floor element” in line 3. There is insufficient antecedent basis for this limitation in the claim. The proper established antecedent basis for this limitation is the plural form, “said floor elements.” See, Claim 1, line 2.
Claim 1 recites the phrase “Moh’s hardness” in line 8. However, the proper phrase is “Mohs hardness.” Appropriate correction is required.
Claim 1 recites the limitation that “a foil is available above said underlayment basic layer and said adhesive layer” in line 11. The scope of this limitation is unclear. Figure 1 shows that the foil layer 7 that is above the underlayment basic layer 8 is below the adhesive layer 4. Paragraph [0127] of the Specification specifically discloses that “a PET foil 7 is sandwiched between the adhesive layer 4 and the PU underlayment basic layer 8.” See also Abstract (“A foil is available above the underlayment basic layer and below the adhesive layer.”). As such, this limitation appears to be missing the scope of the invention, which is that the foil is available above the underlayment basic layer and below the adhesive layer. How would it function properly if the second foil layer was above the adhesive layer? As such, Claim 1 and its dependent claims are indefinite.
Claim 1 recites the broad recitation that the foil is manufactured from a thermoplastic material having a melting temperature of 235 degrees C. or lower, and the claim also recites that the thermoplastic material has a melting point of 200 degrees C. or lower, which is a narrower statement of the range/limitation. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See M.P.E.P. § 2173.05(c). As such, Claim 1 and its dependent claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 1 recites the limitation “said foil is manufactured from a thermoplastic material having a melting temperature …” in line 12. Claim 1 recites the limitation “said foil is a foil of glycol modified PET (PETG) or a foil of polypropylene (PP)” in lines 13-14. However, Claim 1 has recitations related to two different foil layers being present in the floor covering, one of which is at the bottom of the underlayment (recited in line 10), and one of which is above the underlayment basic layer (recited in line 11). Applicant has not clearly and distinctly indicated which of these foil materials, i.e., the lower foil or the upper foil, is being referenced with these further limitations. As such, Claim 1 and its dependent claims is indefinite.
Claim 2 recites the limitation “said floor element” in line 5 and again in line 6. There is insufficient antecedent basis for this limitation in the claim. The proper established antecedent basis for this limitation is the plural form, “said floor elements.” See, Claim 2, line 1; see also Claim 1, line 2.
Claim 5 recites that the acrylic compounds are formed of “low Tg monomers” and “high Tg monomers.” However, it is unclear what temperature satisfies the conditions of being either low Tg or high Tg. At what temperature does a monomer become low Tg? At what temperature does a monomer become high Tg? How does the person having ordinary skill in the art avoid using low Tg monomers? How does the person having skill in the art avoid using high Tg monomers? The scope of Claim 5 is indefinite.
Claim 6 recites “[t]he floor covering of claim 1, wherein said underlayment basic layer and said adhesive layer form part of an underlayment.” Is “an underlayment” different from the underlayment recited in line 1 of Claim 1? If so, then how? Claim 1 already recites an underlayment with an underlayment basic layer, wherein an adhesive layer is present between the underlayment basic layer and the floor elements. So what structure is Claim 6 reciting that isn’t already present? The scope of Claim 6 is unclear.
Claim 11 recites the broad recitation that the majority of said fillers have a Moh’s hardness of 5 or less, and the claim also recites that the majority of said fillers have a Moh’s hardness of 3 or less, which is a narrower statement of the range/limitation. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See M.P.E.P. § 2173.05(c). As such, Claim 11 is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 11 recites the phrase “Moh’s hardness” in line 5 and again in lines 6-7. However, the proper phrase is “Mohs hardness.” Appropriate correction is required.
Claim 11 recites “said underlayment basic layer (8) is 500 micrometer or less.” in lines 12-13. Why is the character numeral used (8) used in this phrase? Why is micrometer provided as a singular when the number before it is plural? Why is there a period, then the start of a second sentence? The narrative nature of Claim 11 renders it indefinite.
Claim 11 recites that “said underlayment basic layer is formed at least from a thermoplastic material being a crystalline or semi-crystalline material, such as polyethylene or polypropylene, or a copolymer of polyethylene and/or polypropylene” in lines 19-21. However, the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See M.P.E.P. § 2173.05(d).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 11 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2021/0246670 to Jarvinen et al. (“Jarvinen”).
With regard to Claim 11, Jarvinen discloses a floor underlayment for use in a floor covering system comprising a first layer, a second layer, and an inner layer between the first and second layer. See, e.g., Abstract, entire document. Jarvinen discloses that the underlayment has the property that the bottom layer of the underlayment is formed of polyethylene. Paragraph [0109].
Claim 11 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by International Patent Application No. WO 2020/075111 to De Lepeleer et al. (“De Lepeleer”).
With regard to Claim 11, De Lepeleer discloses an underlayment, used as a floor covering, comprising a first flexible foamed PVC layer and an outer layer of adhesive. See, e.g., Abstract, entire document. De Lepeleer discloses that the underlayment has a property that the flexible foamed PVC layer comprises filler, wherein the filler can be calcium carbonate or talcum. Page 5, lines 27-30.
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.
Claims 1 and 3-9 are rejected under 35 U.S.C. 103 as being unpatentable over De Lepeleer in view of U.S. Patent Application Publication No. 2020/0217086 to Hofele (“Hofele”) and U.S. Patent Application Publication No. 2004/0197544 to Ramesh et al. (“Ramesh”).
With regard to Claims 1 and 8, De Lepeleer discloses an underlayment, used as a floor covering, comprising a first flexible foamed PVC layer and an outer layer of adhesive. See, e.g., Abstract, entire document. De Lepeleer discloses that the floor covering comprises a plurality of floor elements 300 that overlay the outer layer of adhesive 204, which itself overlays the first flexible foamed PVC layer 202. Figure 1 and page 24, lines 28-34. The first flexible foamed PVC layer of De Lepeleer can be equated to the claimed underlayment basic layer. Moreover, De Lepeleer discloses that a second polymer layer, such as a PVC layer, can be used, page 26, line 23 – page 27, line 4, which can, alternatively, be equated to the claimed underlayment basic layer. See also page 29, lines 10-22. De Lepeleer discloses that the first or second PVC layer comprises filler, wherein the filler can be calcium carbonate or talcum. Page 5, lines 27-30. De Lepeleer discloses that the plurality of floor elements comprise polyvinyl chloride. Page 12, lines 4-15. De Lepeleer discloses that a polymeric waterproof film, such as PET film, can be provided above the first flexible foamed PVC layer. Page 7, lines 31-34. However, De Lepeleer does not disclose the polymeric waterproof film comprises polypropylene. Hofele is also related to underlayment construction for flooring applications. See, e.g., Abstract, entire document. Hofele teaches that plastic foils comprising polypropylene are also suitable to provide a moisture and vapor barrier. Paragraph [0042]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to construct the polymeric waterproof film disclosed by De Lepeleer using polypropylene to provide water and moisture barriers to the underlayment material, since Hofele teaches that polypropylene is a well known and suitable polymer for such applications, and because 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 and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960). De Lepeleer does not disclose that the bottom of the underlayment is formed by a foil of polypropylene. Ramesh is related to sound and moisture barrier sheet materials used in flooring underlayment. See, e.g., Abstract, entire document. Ramesh discloses that film/foam laminates, which can include filler, can be provided with additional layers to provide additional moisture vapor barrier function, such as a sandwich structure where the film/foam laminate is provided with an additional outer film layer. Figure 4 and paragraphs [0049] to [0050]. Ramesh teaches that the moisture vapor barrier film layer can comprise polypropylene. Paragraph [0035]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the bottom of the underlayment disclosed by De Lepeleer with an additional film layer comprising polypropylene in order to provide additional moisture vapor resistance to the composite material, as shown to be known in the art by Ramesh. With regard to Claim 3, De Lepeleer discloses the adhesive is present in an amount of 5 to 90 gsm. Page 7, lines 28-29. Although De Lepeleer does not disclose the property of peel strength in the adhesive layer, it is reasonable to presume the adhesive has a peel strength in the range of 10 to 50 N/50 mm. Support for the presumption is found because De Lepeleer discloses similar materials, i.e. similar polymeric layers and adhesives, used in similar processes, surface bonding of the same layers, to form a similar end use product, i.e., a floor underlayment capable of bonding a plurality of flooring elements. Alternatively, it would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide an adhesive layer having a peeling strength of 10 to 50 N/50 mm in order to provide adhesive strength sufficient to prevent delamination of the flooring material. With regard to Claim 4, De Lepeleer discloses the adhesive is pressure sensitive adhesive. Page 7, lines 24-26. With regard to Claim 5, the limitations of the acrylic compounds are alternative to the pressure sensitive adhesive in Claim 4, and are therefore not required. With regard to Claim 6, the adhesive layer of De Lepeleer can be considered as part of the underlayment. With regard to Claim 7, De Lepeleer discloses using a reinforcing scrim between the underlayment basic layer and the adhesive layer. Figures 1 and 3, page 24, lines 28-34, and page 28, lines 33-35. With regard to Claim 9, De Lepeleer discloses a first flexible foamed PVC polymer thickness of up to 1.6 mm. Page 2, lines 13-15. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a weight of the underlayment basic layer of at least 2 kgsm in order to provide a heavier, more durable floor underlayment, and because “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 (CCPA 1955).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over De Lepeleer in view of Hofele and Ramesh as applied to Claim 1 above, and further in view of U.S. Patent Application Publication No. 2019/0161975 to Simon (“Simon”).
With regard to Claim 2, De Lepeleer does not disclose the floor elements comprise plasticizer and a barrier to reduce plasticizer migration. Simon is also related to floor coverings comprising luxury vinyl tiles. See, e.g., Abstract, paragraph [0014], entire document. Simon teaches such the floor panels can be provided with plasticizer and a barrier layer to reduce migration of the chemical compounds between the layers. Paragraph [0038]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to utilize plasticizer in the plurality of floor elements disclosed by De Lepeleer in order to provide flexibility to the floor elements, and to utilize a barrier at the lower surface of the floor element to prevent plasticizer from migrating to the underlayment, as shown to be known in the art by Simon.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over De Lepeleer in view of Hofele and Ramesh as applied to Claim 1 above, and further in view of U.S. Patent Application Publication No. 2011/0154772 to Lontchar et al. (“Lontchar”).
With regard to Claim 10, De Lepeleer does not disclose the flexible foamed PVC layer to be free of particles having a particle size larger than 500 micrometers. Lontchar is also related to floor covering materials. See, e.g., Abstract, entire document. Lontchar teaches that typical calcium carbonate filler used in flooring underlayment has a particle size less than 3 microns. Paragraph [0035]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to utilize calcium carbonate particles free of a particle size greater than 500 micrometers in order to provide an average particle size less than 3 microns and smooth and even distribution of the inorganic filler in the PVC layer of De Lepeleer, because Lontchar teaches that such particle size range of calcium carbonate is easily available in the same field of endeavor, and because “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 (CCPA 1955).
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,662,825 (“the ‘825 Patent”) in view of Ramesh. The ‘825 Patent also claims a floor covering comprising an underlayment with an underlayment basic layer, at least a plurality of floor elements and an adhesive layer, wherein said adhesive layer is positioned in between said underlayment basic layer and said floor elements, and wherein said floor element comprises at least polyvinyl chloride, wherein said underlayment basic layer comprises polyurethane or polyvinyl chloride, wherein said underlayment further comprises the following properties in combination: said underlayment basic layer comprises fillers, wherein the majority of said fillers have a Moh's hardness of 5 or less and/or wherein the majority of said fillers is formed by CaCO.sub.3 and/or talcum; a bottom of said underlayment is formed by a foil of polypropylene or a foil of polyethylene. While the ‘825 Patent does not claim that a polypropylene foil is available above the underlayment basic layer, Ramesh teaches that film/foam laminates, which can include filler, can be provided with additional layers to provide additional moisture vapor barrier function, such as a sandwich structure where the film/foam laminate is provided with an additional outer film layer. Figure 4 and paragraphs [0049] to [0050]. Ramesh also teaches that the moisture vapor barrier film layer can comprise polypropylene. Paragraph [0035]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a foil comprising polypropylene above the underlayment basic layer claimed by the ‘825 Patent in order to provide additional moisture vapor resistance to the composite material, as shown to be known in the art by Ramesh.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-11 of copending Application No. 19/689,209 (“the ‘209 Application”) in view of Ramesh. The ‘209 Application claims a floor covering comprising an underlayment with an underlayment basic layer, at least a plurality of floor elements and an adhesive layer between the underlayment basic layer and the floor elements, wherein the floor elements and the underlayment basic layer comprise polyvinyl chloride, and wherein the underlayment basic layer includes similar fillers. While the ‘209 Application does not claim that a polypropylene foil is available above the underlayment basic layer, Ramesh teaches that film/foam laminates, which can include filler, can be provided with additional layers to provide additional moisture vapor barrier function, such as a sandwich structure where the film/foam laminate is provided with an additional outer film layer. Figure 4 and paragraphs [0049] to [0050]. Ramesh also teaches that the moisture vapor barrier film layer can comprise polypropylene. Paragraph [0035]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a foil comprising polypropylene above the underlayment basic layer claimed by the 209 Application in order to provide additional moisture vapor resistance to the composite material, as shown to be known in the art by Ramesh.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789
Prosecution Insights