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 1-5 and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,974,488. Although the claims at issue are not identical, they are not patentably distinct from each other because both describe an engineered plank comprising a substrate and a surface layer.
Regarding claims 1-4:
Independent claims 1 and 14 of US ‘488 each disclose an engineered plank comprising a surface layer and a plastic composite base material layer (substrate). Claims 4 and 15 disclose the surface layer comprises ceramic, tile, etc. Although the claims of US ‘488 do not disclose all of the presently claimed processing steps, the present claim contains product-by-process limitations. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Regarding claims 5:
The independent claims disclose these materials.
Regarding claim 7:
The independent claims specify the layers are joined without an intermediate adhesive.
Claim Rejections - 35 USC § 102
Claim(s) 1-4 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kameyama et al. (KR 2000-0017472).
Note: citations refer to the machine translation of KR ‘472 provided with this Office Action.
Regarding claims 1-4:
Kameyama discloses a floor material comprising a wood flour-resin composite (1) and a surface exterior material (2) [abstract;17]. (Note: the machine translation refers to a “neck spray pond composite” which is an error that is interpreted to refer to the wood flour-resin composite material.) The composite (1) is formed by mixing at least the wood flour and the thermoplastic resin and extruding the mixture [61; 93-98]. The surface exterior material (2) is thermally pressed onto the composite (1) [50; 121]. The surface exterior material (2) comprises stone [18-20; 59].
Additionally, in some embodiments Kameyama further uses a moisture permeability material layer (6) between the composite (1) and the surface exterior material (2), wherein the layer (6) comprises paper or fabric and is bonded to the composite by pressing the paper onto the extruded composite (1) [48-49; 53; 124-125].
Additionally, in some embodiments, Kameyama further uses a backing material (4) comprising paper or fabric that is bonded to the composite (1) by fusion with heat [95].
Although Kameyama does not disclose all of the claimed process steps, note that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Kameyama meets the requirements of the claimed product, Kameyama’s product would be indistinguishable from the final product of the present claims.
While there is no disclosure that the laminated structure is “an engineered plank” as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. an engineered plank, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is a laminated structure identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claim 7:
Kameyama teaches fusion bonding paper to the composite (1) [48-49; 53; 124-125]. This product, which exists prior to applying the surface exterior material (2), meets the claimed requirements because it does not contain adhesive.
Claim(s) 1-5 and 7-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Laurence et al. (US 2002/0160680).
Regarding claims 1-4 and 7:
Laurence discloses a decorative laminate provided in the form of planks for use in flooring [abstract; 0002; 0076; 0089]. In one embodiment, the laminate comprises an overlay layer 22, a decorative layer 24, a core layer 26, and a moisture resistant substrate 34 [0033; 0042; 0051-0052; Figs. 2 & 3]. The core layer 26 can comprise thermoplastics that are extruded as continuous sheets [0043]. The overlay and decorative layers 22, 24 comprise conventional materials comprising paper [0007-0011; 0046]. Laurence also teaches further embodiments comprising layers of various cloths and nonwoven glass in contact with the core layer [0048]. The laminate is formed continuous glueless process wherein the layers are brought into contact with heat and pressure to melt and bond the layers together [0051; 0088].
Although Laurence does not disclose all of the claimed process steps, note that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Laurence meets the requirements of the claimed product, Laurence’s product would be indistinguishable from the final product of the present claims.
While there is no disclosure that the plank is “an engineered plank” as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. an engineered plank, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is a plank identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claim 5:
Laurence teaches the use of PVC comprising calcium carbonate and/or plasticizer [0055-0056].
Regarding claim 8:
Laurence teaches the surface comprises designs (patterns) [0007; 0051; 0071].
Claim Rejections - 35 USC § 103
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kameyama et al. (KR 2000-0017472) in view of Dossche et al. (US 2014/0109507).
Regarding claim 5:
Kameyama discloses a floor material comprising a wood flour-resin composite (1) and a surface exterior material (2) as previously explained. The thermoplastic resin used for the composite is selected from known resins (e.g., polyethylene) to provide the properties desired for an end use [17; 61; 86].
Kameyama is silent with regard to the presently claimed materials.
Such materials were known in the art to have utility. For example, Dossche disclose an engineered plank comprising a core 30, a wear layer 20, and an underlayment layer 40 [abstract; 0001; 0014-0016; Figs. 1-2]. The core comprises wood dust and a thermoplastic such as polyethylene and PVC, as well as known additives, such as stabilizers, lubricants, and calcium carbonate [0015].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use the additives as taught by Dossche in the floor material taught by Kameyama to provide a floor material having the properties desired for a given end use. Alternatively, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use PVC as the base resin as taught by Dossche in the floor material taught by Kameyama to provide a floor material having the properties desired for a given end use.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s amendments to claim 1 to require “the surface layer comprises one or more of ceramic, tile, glass, paper, leather, metal materials, stone, cloth, carpet, and cork” overcomes previous rejections based on Kelch et al. (US 5,356,705). The reference discloses weatherable laminated structures for use in the building and construction industry, especially as siding (1:5+; 6:42+). The structures comprise a substrate and a weatherable film (4:56+). The two layers are thermally laminated under pressure without the use of an adhesive (3:61+; 6:16+). Any of the layers comprise multiple materials (5:8-69). The layers comprise plastics (5:8-69). Kelch is silent with regard to a surface layer comprising one or more of the claimed materials.
Additionally, Applicant’s amendments to claim 1 to require “the surface layer comprises one or more of ceramic, tile, glass, paper, leather, metal materials, stone, cloth, carpet, and cork” overcomes previous double patenting rejections over claims of U.S. Patent No. 11,975,510. The claims of US ‘510 do not describe a surface layer comprising one or more of the claimed materials.
Conclusion
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 JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787