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 .
Summary
The Applicant’s arguments and claim amendments received on July 13, 2026 are entered into the file. Currently, claims 1, 2, 7-9, 13, 18, and 20 are amended; claims 11, 14, and 17 are cancelled; claims 21-25 are new; resulting in claims 1-10, 12, 13, 15, 16, 18-25 pending for examination.
Claims 23 and 24, drawn to a method of manufacturing a wallcovering panel, belong to the invention of Group II set forth in the Restriction Requirement mailed February 23, 2026 and are therefore withdrawn as being directed to a non-elected invention.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10, 12, 13, 15, 16, 18-22, and 25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1 and 9, the limitations reciting “wherein the at least one foam layer comprises at least one of a polyurethane foam, an expanded polystyrene foam, an ethylene-vinyl acetate foam, a polyethylene foam, a polypropylene foam, and a neoprene foam” are considered new matter that is not adequately supported by the instant specification.
In particular, the instant specification does not expressly disclose that foam layer (18), which corresponds to the claimed foam layer, can comprise an expanded polystyrene foam. Rather, paragraph [0017] of the as-filed specification sets discloses the foam substrate (12), which corresponds to the claimed semi-rigid foam substrate or first portion, may include expanded polystyrene foams and the like, and paragraph [0018] discloses that the foam layer (18) may comprise polymer foams including polystyrene and the like. The instant specification therefore provides support for the foam layer comprising a polystyrene foam, but does not support the narrower recitation of the foam layer or second portion comprising an expanded polystyrene foam.
Regarding claims 1, 9, and 18, the limitations reciting “wherein a peel adhesive strength of the pressure sensitive adhesive layer is between about 2 lbs/in2 and about 6 lbs/in2” (claims 1 and 9) and “wherein a peel strength of the adhesive is between about 2 lbs/in2 and about 6 lbs/in2” (claim 18) are considered new matter that is not adequately supported by the instant specification.
In particular, the instant specification does not expressly disclose a peel strength range having a lower endpoint of “about 2 lbs/in2”. Rather, paragraph [0025] of the specification discloses that the adhesive layer has a peel adhesion strength “preferably of between 2 lbs/in2 and about 6 lbs/in2, more preferably of about 3-5 lbs/in2, and most preferably of about 4 lbs/in2”. The instant specification therefore discloses a peel strength range of 2 lbs/in2 to about 6 lbs/in2, where the upper bound may be an approximate value, but the lower bound is not expressed as an approximate value.
Regarding claim 9, the limitation in lines 11-12 reciting “wherein a peel strength of the pressure sensitive adhesive layer…” is indefinite because the phrase “the pressure sensitive adhesive layer” lacks antecedent basis in the claim. Line 9 of claim 9 sets forth that the wallcovering panel comprises “an adhesive layer”, such that the limitation directed to the “pressure sensitive adhesive layer” is interpreted as referring back to the previously-recited adhesive layer.
Regarding claim 18, the limitation reciting “wherein the second portion comprises at least one of a polyurethane foam, an expanded polystyrene foam, an ethylene-vinyl acetate foam, a polyethylene foam, and a neoprene foam” is considered new matter that is not adequately supported by the instant specification. It is noted that the claimed second portion corresponds to the foam substrate (12) discussed throughout the instant specification, to which the adhesive (26) is disposed on a second side thereof, while the claimed first portion corresponds to the foam layer (18) discussed in the specification, on which a pattern (24) is etched (see paragraphs [0019]-[0020] of the instant specification).
The instant specification does not expressly disclose that foam substrate (12), which corresponds to the claimed second portion, can comprise a polypropylene foam or a neoprene foam. Rather, paragraph [0017] of the as-filed specification sets discloses the foam substrate (12) may include lightweight closed cell plastic foam such as polyurethane foams, expanded polystyrene foams, EVA foams, polyethylene foams, and other varying materials, while paragraph [0018] discloses that the foam layer (18), which corresponds to the claimed first portion, may comprise polymer foams including polyurethane, polystyrene, polyethylene, neoprene, polypropylene, or ethyl-vinyl acetate (EVA). The instant specification therefore provides support for the foam layer or first portion comprising a polypropylene foam or a neoprene foam, but does not support the currently claimed embodiments in which the foam substrate or second portion can comprise these materials.
Regarding claim 21, the limitation reciting “wherein a density of the at least one foam layer is between about 1 lb/ft3 and about 15 lbs/ft3” is considered new matter that is not adequately supported by the instant specification.
Similar to claims 1, 9, and 18 above, the instant specification does expressly disclose a density range of the foam layer having an upper endpoint of “about 15 lbs/ft3”. Rather, paragraph [0018] of the specification discloses that the density of the foam layer preferably range from “about 1 lbs/ft3 to 15 lbs/ft3”, where the upper bound is not expressed as an approximate value.
Regarding claims 2-8, 10, 12, 13, 15, 16, 19, 20, 22, and 25, the claims are rejected based on their dependency on claims 1, 9, and 18.
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 1-10, 12, 13, 15, 16, 18-22, and 25 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.
Regarding claims 1, 8, 9, 18, and 25, the limitations reciting “wherein a peel adhesive strength of the pressure sensitive adhesive layer is between about 2 lbs/in2 and about 6 lbs/in2” (claims 1 and 9), “wherein a peel strength of the adhesive is between about 2 lbs/in2 and about 6 lbs/in2” (claim 18), and “the peel adhesive strength of the pressure sensitive adhesive layer is between 2 and 4 pounds per inch” (claims 8 and 25) are indefinite because the units of “lb/in2” in claims 1, 9, and 18 do not align with the claimed peel adhesive strength property, while the units “pounds per inch” in claims 8 and 25 are inconsistent with the units recited in claims 1, 9, and 18.
As explained in paragraphs 11-13 of the previous office action, the units recited in claims 8 and 25 of “pounds per inch” (lb/in) are understood to correspond to the units of peel strength (force per unit length), while the units disclosed in paragraph [0025] and now recited in claims 1, 9, and 18 of lbs/in2 correspond to the units of shear strength (force per unit area). It is not clear whether the term “peel adhesive strength” in claims 1, 9, and 18 and paragraph [0025] is being used to refer to a property of shear strength. It is also not clear why the units of “peel adhesive strength” in claims 8 and 25 are different from the units used in claims 1, 9, and 18.
Although claim 8 was amended to change “shear resistance” to “peel adhesive strength” in response to the previous indefiniteness rejection, the Applicant has not provided any additional clarifying remarks to explain the inconsistency between the peel adhesive strength property and its associated units in either the specification or the claims. Absent further clarification from the Applicant, the claimed “peel adhesive strength” property of the adhesive layer is interpreted to mean either a peel strength as expressed in pounds per inch (lb/in) or a shear strength as expressed in pounds per square inch (lbs/in2).
Regarding claims 2-7, 10, 12, 13, 15, 16, and 19-22, the claims are rejected based on their dependency on claims 1, 9, and 18.
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 (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 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.
Claims 1-10, 12, 13, 15, 16, 18-22, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Bushey et al. (US 2011/0206901, previously cited) in view of Gardner (US 2020/0115563, previously cited) and Rusincovitch et al. (EP 0609603, previously cited).
Regarding claims 1, 2, 4, and 6-8 Bushey et al. teaches a surface covering material (10; wallcovering panel) comprising a first layer (20; semi-rigid foam substrate) having a first surface (22; second surface), a second surface (24; first surface) and a density (first density); a second layer (30; foam layer) having a first surface (32; second side), a second surface (34; first side), and a density (second density), wherein the first surface (32) is joined to the second surface (24) of the first layer; and a third layer (40; pressure sensitive adhesive layer) which is preferably a pressure sensitive adhesive (PSA) applied to the first surface (22) of the first layer ([0024], [0030], Figs. 1-10).
Each of the first and second layers is formed from an expanded vinyl compound and includes a chemical blowing agent as a foaming activator which is added to achieve the desired density ([0024], [0026]-[0028], Tables 1-2). The density of the first layer may be greater than the density of the second layer, wherein the density of the first layer may be in the range of 60 to 80 pounds per cubic foot ([0009]), thus corresponding to the claimed semi-rigid foam substrate.
The second surface of the second layer may include a plurality of markings to resemble a wood finish [0029]. For example, the second surface (34) may be abraded, e.g., by sanding, to produce multiple narrow channels (33) which provide a wood grain appearance (visual depiction of wood grain) ([0029], [0033]-[0034], Figs. 9-10). It is noted that the limitation reciting that the textured pattern is “etched” is a product-by-process limitation which does not distinguish the claimed product from one in which the textured pattern is formed by another method. The patentability of a product does not depend on its method of production. See MPEP 2113(I). In the instant case, the channels (33) formed by abrasion, as taught by Bushey et al., have an identical structure to a textured pattern formed by etching, and thus satisfy the claimed product-by-process limitation.
Although Bushey et al. teaches that the second layer (30; foam layer) is preferably formed from a vinyl compound such as an expanded polyvinyl chloride (PVC) material ([0024], [0028]), the reference does not expressly teach that the second layer includes at least one of the claimed foam materials, such as ethylene-vinyl acetate foam.
Gardner teaches a surface covering, which may be a non-skid covering such as a traction pad for use on a floor or wall surface of a boat or watercraft, comprising one or more layers of material comprising ethylene-vinyl acetate (EVA) foam (Abstract, [0005]). Gardner teaches that the surface covering may provide a padded surface that is comfortable for a user to walk on or to rest against and which provides a desired effect such as cushioning to reduce impact, sound deadening, decoration, texturing, or other appearance enhancing features ([0005], [0016]).
Given that Bushey et al. also teaches its surface covering material being suitable for use as a floor covering on boats or in other areas where a durable, non-slip, and water resistant material may be desirable ([0033]), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surface covering material of Bushey et al. by substituting the expanded PVC material of the second layer (30; foam layer) with an ethylene-vinyl acetate (EVA) foam, given that Gardner teaches that EVA foam is suitable for use in similar surface covering applications requiring non-slip and water resistant properties.
Although Bushey et al. teaches that the surface covering material may be used as a wall or counter-top covering and can be applied thereto with the PSA ([0034]), such that the third layer (40; pressure sensitive adhesive layer) is capable of coupling the surface covering material (10) to a wall surface, the reference is silent to a value of the peel adhesive strength of the third layer and does not specifically teach that the third layer is configured to allow the surface covering material to be peelably removed from the wall surface without damage to the wall surface.
Rusincovitch et al. teaches a pressure sensitive adhesive wallpaper that can be easily repositioned during initial contact with the surface of a wall (Abstract). Rusincovitch et al. teaches that pressure sensitive adhesives (PSAs) can be adhered to a surface and stripped therefrom without transferring more than trace quantities of adhesive to the surface, and then can be re-adhered to the same or another surface because the adhesive retains some of all of its tack and adhesive strength (col 1, Ln 49-col 2, Ln 2). Rusincovitch et al. teaches that PSAs with sufficiently high tack to hold a wall covering in place are difficult to apply to a wall and then reposition (col 2, Ln 4-16). Useful PSAs include elastomeric-type PSAs, such as silicone, acrylic, polyacrylate ester (modified acrylate copolymer), and the like (col 6, Ln 7-col 7, Ln 9).
Rusincovitch et al. teaches that the key properties in characterizing PSAs involve dynamic forces measured as tack, shear, and peel strength, wherein a preferred PSA has a desired balance between shear and peel, but without loss of tack (col 7, Ln 17-21). Rusincovitch et al. teaches that the shear strength tends to deteriorate as the peel strength improves, and that shear strength is slightly less important than peel strength in wall covering products, wherein the adhesive strength properties can be varied to achieve the desired aggressiveness by chemically altering the PSA (col 7, Ln 21-27).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the pressure sensitive adhesive in the surface covering material of Bushey et al. by using a removable adhesive comprising a silicone, acrylic, or modified acrylate copolymer as the PSA of the third layer, as suggested by Rusincovitch et al., given the art-recognized suitability of such materials as conventional pressure-sensitive adhesives used in removable wallcoverings. Moreover, it would have been obvious to one of ordinary skill in the art to have determined the optimum value of a result-effective variable, such as a peel adhesive strength of the pressure sensitive adhesive sufficient to allow the surface covering material to be peelably removed from a wall surface without damage thereto, through routine experimentation, especially given the teachings in Rusincovitch et al. regarding the desire to adjust the peel strength and the shear strength of the PSA as necessary in order to enable the wall covering to be adhered to a surface and re-adhered to the same or another surface without transferring more than trace quantities of adhesive to the surface. See MPEP 2144.05(II).
Regarding claim 3, Bushey et al. in view of Gardner and Rusincovitch et al. teaches all of the limitations of claim 1 above. As explained above, the limitations reciting that the textured pattern is “etched” or “laser etched” are product-by-process limitations which do not distinguish the claimed product from one in which the textured pattern is formed by another method. The patentability of a product does not depend on its method of production. See MPEP 2113(I). In the instant case, the channels (33) formed by abrasion, as taught by Bushey et al., have an identical structure to a textured pattern formed by laser etching, and thus satisfy the claimed product-by-process limitation.
Regarding claim 5, Bushey et al. in view of Gardner and Rusincovitch et al. teaches all of the limitations of claim 1 above, and Bushey et al. and further teaches that the PSA may be covered with a removable backing (46; release layer) to prevent the adhesive from sticking to objects while transporting the surface covering material, wherein the removable backing may be peeled off the third layer (40) at the time of use ([0030], [0032], Figs. 2, 6). The removable backing therefore includes a film in order to enable peeling thereof.
Regarding claims 9, 10, 13, 15, and 16, Bushey et al. teaches a surface covering material (10; wallcovering panel) comprising a first layer (20; foam substrate) having a first surface (22; second side), a second surface (24; first side) and a density (first density); a second layer (30; foam layer) having a first surface (32; second side), a second surface (34; first side), and a density (second density), wherein the first surface (32) is joined to the second surface (24) of the first layer; and a third layer (40; adhesive layer) applied to the first surface (22) of the first layer ([0024], [0030], Figs. 1-10).
Each of the first and second layers is formed from an expanded vinyl compound and includes a chemical blowing agent as a foaming activator which is added to achieve the desired density ([0024], [0026]-[0028], Tables 1-2). The density of the first layer may be greater than the density of the second layer, wherein the density of the first layer may be in the range of 60 to 80 pounds per cubic foot ([0009]), thus corresponding to the claimed foam substrate comprising a semi-rigid substrate.
The second surface of the second layer may include a plurality of markings (textured pattern) to resemble a wood finish [0029]. For example, the second surface (34) may be abraded, e.g., by sanding, to produce multiple narrow channels (33) which provide a wood grain appearance ([0029], [0033]-[0034], Figs. 9-10).
Although Bushey et al. teaches that the second layer (30; foam layer) is preferably formed from a vinyl compound such as an expanded polyvinyl chloride (PVC) material ([0024], [0028]), the reference does not expressly teach that the second layer includes at least one of the claimed foam materials, such as ethylene-vinyl acetate foam.
Gardner teaches a surface covering, which may be a non-skid covering such as a traction pad for use on a floor or wall surface of a boat or watercraft, comprising one or more layers of material comprising ethylene-vinyl acetate (EVA) foam (Abstract, [0005]). Gardner teaches that the surface covering may provide a padded surface that is comfortable for a user to walk on or to rest against and which provides a desired effect such as cushioning to reduce impact, sound deadening, decoration, texturing, or other appearance enhancing features ([0005], [0016]).
Given that Bushey et al. also teaches its surface covering material being suitable for use as a floor covering on boats or in other areas where a durable, non-slip, and water resistant material may be desirable ([0033]), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surface covering material of Bushey et al. by substituting the expanded PVC material of the second layer (30; foam layer) with an ethylene-vinyl acetate (EVA) foam, given that Gardner teaches that EVA foam is suitable for use in similar surface covering applications requiring non-slip and water resistant properties.
Although Bushey et al. teaches that the surface covering material may be used as a wall or counter-top covering and can be applied thereto with the PSA ([0034]), such that the third layer (40; pressure sensitive adhesive layer) is capable of coupling the surface covering material (10) to a wall surface, the reference is silent to a value of the peel adhesive strength of the third layer and does not specifically teach that the third layer is allows the wallcovering panel to be removed from the surface.
Rusincovitch et al. teaches a pressure sensitive adhesive wallpaper that can be easily repositioned during initial contact with the surface of a wall (Abstract). Rusincovitch et al. teaches that pressure sensitive adhesives (PSAs) can be adhered to a surface and stripped therefrom without transferring more than trace quantities of adhesive to the surface, and then can be re-adhered to the same or another surface because the adhesive retains some of all of its tack and adhesive strength (col 1, Ln 49-col 2, Ln 2). Rusincovitch et al. teaches that PSAs with sufficiently high tack to hold a wall covering in place are difficult to apply to a wall and then reposition (col 2, Ln 4-16).
Rusincovitch et al. teaches that the key properties in characterizing PSAs involve dynamic forces measured as tack, shear, and peel strength, wherein a preferred PSA has a desired balance between shear and peel, but without loss of tack (col 7, Ln 17-21). Rusincovitch et al. teaches that the shear strength tends to deteriorate as the peel strength improves, and that shear strength is slightly less important than peel strength in wall covering products, wherein the adhesive strength properties can be varied to achieve the desired aggressiveness by chemically altering the PSA (col 7, Ln 21-27).
It would have been obvious to one of ordinary skill in the art to have determined the optimum value of a result-effective variable, such as a peel adhesive strength of the pressure sensitive adhesive sufficient to allow the surface covering material to be peelably removed from a wall surface without damage thereto, through routine experimentation, especially given the teachings in Rusincovitch et al. regarding the desire to adjust the peel strength and the shear strength of the PSA as necessary in order to enable the wall covering to be adhered to a surface and re-adhered to the same or another surface without transferring more than trace quantities of adhesive to the surface. See MPEP 2144.05(II).
Regarding claim 12, Bushey et al. in view of Gardner and Rusincovitch et al. teaches all of the limitations of claim 9 above, and Bushey et al. further teaches that the first surface (32) of the second layer (30) is joined to the second surface (24) of the first layer (20), preferably by co-extrusion or by dispensing and partially curing the first layer followed by dispensing the second layer onto the first layer and curing the two layers together to form a chemical bond therebetween [0024]. The surface covering material therefore has a structure in which the first layer is integrally connected to the second layer.
Regarding claims 18-20 and 25, Bushey et al. teaches a surface covering material (10; wallcovering panel) comprising a first layer (20; second portion) having a first surface (22; second side), a second surface (24) and a density (second density); a second layer (30; first portion) having a first surface (32), a second surface (34; first side), and a density (first density), wherein the first surface (32) is joined to the second surface (24) of the first layer; and a third layer (40; adhesive) applied to the first surface (22) of the first layer ([0024], [0030], Figs. 1-10). The density of the first layer may be greater than the density of the second layer, wherein the density of the first layer may be in the range of 60 to 80 pounds per cubic foot ([0009]), thus corresponding to the claimed semi-rigid portion.
Bushey et al. teaches that the first surface (32) of the second layer (30) is joined to the second surface (24) of the first layer (20), preferably by co-extrusion or by dispensing and partially curing the first layer followed by dispensing the second layer onto the first layer and curing the two layers together to form a chemical bond therebetween [0024]. The surface covering material therefore has a structure in which the first layer (20; second portion) is integrally formed with the second layer (30; first portion).
The second surface of the second layer may include a plurality of markings (pattern) to resemble a wood finish [0029]. For example, the second surface (34; first side) may be abraded, e.g., by sanding, to produce multiple narrow channels (33) which provide a wood grain appearance ([0029], [0033]-[0034], Figs. 9-10). It is noted that the limitation reciting that the pattern is “etched” into the first side is a product-by-process limitation which does not distinguish the claimed product from one in which the pattern is formed by another method. The patentability of a product does not depend on its method of production. See MPEP 2113(I). In the instant case, the channels (33) formed by abrasion, as taught by Bushey et al., have an identical structure to a pattern formed by etching, and thus satisfy the claimed product-by-process limitation.
Although Bushey et al. teaches that the first layer (20; second portion) is preferably formed from a vinyl compound such as an expanded polyvinyl chloride (PVC) material ([0024], [0026]), the reference does not expressly teach that the first layer includes at least one of the claimed foam materials, such as ethylene-vinyl acetate foam.
Gardner teaches a surface covering, which may be a non-skid covering such as a traction pad for use on a floor or wall surface of a boat or watercraft, comprising one or more layers of material comprising ethylene-vinyl acetate (EVA) foam (Abstract, [0005]). Gardner teaches that the surface covering may provide a padded surface that is comfortable for a user to walk on or to rest against and which provides a desired effect such as cushioning to reduce impact, sound deadening, decoration, texturing, or other appearance enhancing features ([0005], [0016]).
Given that Bushey et al. also teaches its surface covering material being suitable for use as a floor covering on boats or in other areas where a durable, non-slip, and water resistant material may be desirable ([0033]), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surface covering material of Bushey et al. by substituting the expanded PVC material of the first layer (20; second portion) with an ethylene-vinyl acetate (EVA) foam, given that Gardner teaches that EVA foam is suitable for use in similar surface covering applications requiring non-slip and water resistant properties.
Although Bushey et al. teaches that the surface covering material may be used as a wall or counter-top covering and can be applied thereto with the PSA ([0034]), such that the third layer (40; pressure sensitive adhesive layer) is capable of coupling the surface covering material (10) to a wall surface, the reference is silent to a value of the peel adhesive strength of the third layer and does not specifically teach that the third layer is allows the wallcovering panel to be removed from the surface without damage to the wall surface.
Rusincovitch et al. teaches a pressure sensitive adhesive wallpaper that can be easily repositioned during initial contact with the surface of a wall (Abstract). Rusincovitch et al. teaches that pressure sensitive adhesives (PSAs) can be adhered to a surface and stripped therefrom without transferring more than trace quantities of adhesive to the surface, and then can be re-adhered to the same or another surface because the adhesive retains some of all of its tack and adhesive strength (col 1, Ln 49-col 2, Ln 2). Rusincovitch et al. teaches that PSAs with sufficiently high tack to hold a wall covering in place are difficult to apply to a wall and then reposition (col 2, Ln 4-16).
Rusincovitch et al. teaches that the key properties in characterizing PSAs involve dynamic forces measured as tack, shear, and peel strength, wherein a preferred PSA has a desired balance between shear and peel, but without loss of tack (col 7, Ln 17-21). Rusincovitch et al. teaches that the shear strength tends to deteriorate as the peel strength improves, and that shear strength is slightly less important than peel strength in wall covering products, wherein the adhesive strength properties can be varied to achieve the desired aggressiveness by chemically altering the PSA (col 7, Ln 21-27).
It would have been obvious to one of ordinary skill in the art to have determined the optimum value of a result-effective variable, such as a peel adhesive strength of the pressure sensitive adhesive sufficient to allow the surface covering material to be peelably removed from a wall surface without damage thereto, through routine experimentation, especially given the teachings in Rusincovitch et al. regarding the desire to adjust the peel strength and the shear strength of the PSA as necessary in order to enable the wall covering to be adhered to a surface and re-adhered to the same or another surface without transferring more than trace quantities of adhesive to the surface. See MPEP 2144.05(II).
Regarding claims 21 and 22, Bushey et al. in view of Gardner and Rusincovitch et al. teaches all of the limitations of claim 1 above. Although Bushey et al. teaches that the density of the second layer (30; foam layer) may be in the range of 30 to 50 pounds per cubic foot, where the surface covering material may be used as a wall or counter-top covering ([0009], [0027], [0034]), the reference does not expressly teach the foam layer having a density within the claimed ranges.
It would, however, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surface covering material of Bushey et al. in view of Gardner and Rusincovitch et al. by adjusting the density of the second layer, such as to a value within the claimed ranges, in order to achieve the desired balance between the durability and weight for an intended application of the surface covering material. For example, one of ordinary skill in the art would recognize that a product containing higher density foam layers would be heavier and may be less suitable for use as a wall covering, while a product containing lower density foam would have worse compressive strength and load bearing capacity, making it less suitable for use as a covering for a counter-top which may hold heavy objects.
Response to Arguments
Response-Claim Objections
The previous objection to claim 8 is overcome by the Applicant’s amendment to the claim in the response filed July 13, 2026.
Response-Claim Rejections - 35 USC § 112
The previous rejections of claims 7, 8, 14, and 18-20 under 35 U.S.C. 112(b) as being indefinite are overcome by the Applicant’s amendments to the claims in the response filed July 13, 2026.
However, in light of the amendments to the claims, new issues under 35 U.S.C. 112(a) and 112(b) are presented in the office action above.
Response-Claim Rejections - 35 USC § 102
Applicant’s arguments, see pages 7-9 of the remarks filed July 13, 2026, have been considered but are moot because they do not address the new combination of references being used in the rejections above. In light of the amendments to claims 1, 9, and 18, the previous rejections under 35 U.S.C. 102 based on Bushey et al. are withdrawn, and Gardner et al. and Rusincovitch et al. are used in combination with Bushey et al. to address the new combination of limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Miks et al. (US 2025/0187301) teaches an insulation component comprising a first foam layer having a first density and a second foam layer coupled to the first foam layer and having a second density less than the first density (Abstract). For example, the first insulation layer (110) may have a density between about 1 pcf and 4 pcf, where the high density of the first insulation layer may provide excellent thermal insulation, flame resistance, water resistance, and mechanical properties [0036]. The second insulation layer (120) may have a density less than 1.5 pcf, where the low density may provide excellent acoustic insulation properties [0037].
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L GRUSBY whose telephone number is (571) 272-1564. The examiner can normally be reached Monday-Friday, 8:30 AM-5:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REBECCA L GRUSBY/Primary Examiner, Art Unit 1785
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