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 .
This non-final Office action is in response to Applicant’s patent application number 19/048,450 filed on 2/7/2025.
Currently, claims 1-20 are pending and examined.
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. 17/791,637, filed on 7/8/2022.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 2/7/2025; 8/5/2026 are being considered by the examiner.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” or “The invention relates to”, etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Re claim 1, lines 7, 9, 23, 32, 34, 37, 42; a phrase “which” renders the claim indefinite and confusing because it is unclear whether “which” referring to which structure? Clarification is required. Claims 2-19 depending upon the rejected claim 1 are also rejected. Claims 5, 7; having the same issue are also rejected.
Re claim 1, line 8; the citation “the plane” does not have a proper antecedent basis. Correction is required.
Re claim 1 line 27; a citation “in particular” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. Clarification is required. Claim 11; having the same issue as mentioned is also rejected.
Re claim 1, lines 31-32, 35; a citation “these coupling parts” renders the claim indefinite and confusing because it is unclear whether “these” referring to which coupling parts? Clarification is required.
Re claim 7, line 1; a citation “the distance” does not have a proper antecedent basis. Correction is required.
Re claim 12, lines 4, 6; a phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. Correction is required.
Re claim 13, line 2; a citation “a recess” is confusing and indefinite because it’s unclear whether the same “a recess” cited in claim 1, line 18? Clarification is required.
Re claim 17, line 2; a citation “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Correction is required.
Re claim 20, last line; a citation “the thickness” does not have a proper antecedent basis. Correction is required.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,247,405. Although the claims at issue are not identical, they are not patentably distinct from each other because all structures of the instant claims are fully encompassed within the patented claims.
The following are claims mapping between instant and patented claims:
Instant claims: Patented claims:
1 1, 5, 6
2 2
3 3
4 6
5 7
6, 10, 13 5
8, 9, 12 8
11 7
14 13
15 14
16 15
17 17
18 19
19 18
20 1
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(s) 20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US No. 2005/0208255 to Pervan.
Re claim 20: Pervan discloses glue-down decorative floor covering system, comprising a plurality of interlockable decorative flexible floor tiles (Fig. 3a-3d, par. [0047]), wherein each floor tile 1 is rectangular (Fig. 1d), either oblong or square, and thus comprises a first pair of opposite edges and a second pair of opposite edges; wherein the first pair of opposite edges comprise mechanical coupling parts 7/7’ allowing to mutually mechanically couple a plurality of such tiles to each other, wherein said coupling parts 7/7’ form a first locking system which effects a locking of mutually coupled tiles in the plane of the tiles and perpendicular to the respective edges, as well as form a second locking system which effects a locking of mutually coupled tiles perpendicular to the plane of the tiles, wherein these coupling parts substantially are realized from said substrate layer; wherein the coupling parts 7/7’ at said first pair of opposite edges are configured such that two of such tiles 1 can be coupled to each other at these edges by means of a turning movement and/or vertical movement (par. [0005], and wherein the second pair of opposite edges is free of any mechanical coupling parts (see Fig. 1d); wherein the second pair of opposite edges (wherein 30/31) point to in Fig. 1d; consists of a third edge and an opposite fourth edge, wherein the third edge is provided with a substantially vertical third end surface and wherein the fourth edge is provided with a substantially vertical fourth end surface, wherein preferably the top section of the third end surface and the fourth end surface engage to each other, or are in contact with each other, over at least half the thickness of the tiles 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (see attached PTO-892).
Contact Information
Any inquiry concerning this communication or earlier communication from the examiner should be directed to CHI Q. NGUYEN whose telephone number is (571) 272-6847. The examiner can normally be reached on Monday-Friday from 7AM-5PM or email: chi.nguyen@uspto.gov. If attempt to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Brian Mattei can be reached at (571) 270-3238. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pairdirect.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at (866) 217-9197.
/CHI Q NGUYEN/
Primary Examiner, Art Unit 3635
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