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 March 14, 2026 are entered into the file. Currently, claims 1, 4, 6-8, 10, 16, and 18-20 are amended; claims 3, 9, 11, and 17 are cancelled; claims 12-15 are withdrawn; resulting in claims 1, 2, 4-8, 10, 16, and 18-20 pending for examination.
Specification
The disclosure is objected to because of the following informalities: In paragraph [0032] of the specification, reference numerals "100" and "10" have both been used to designate a composite marine decking assembly. See paragraph 7 of the previous office action. In the Applicant’s response filed March 14, 2026, only one of the two instances of the reference numeral “100” in paragraph [0032] was changed to “10”.
Appropriate correction is required.
Claim Objections
Claims 1-3, 5, 8, 9, 11, 17, 18, and 20 are objected to because of the following informalities:
Regarding claims 1, 2, 16, 18, and 20, the limitations directed to “the neoprene foam” should be amended to recite --the neoprene foam layer-- when referring to the first layer of closed-cell neoprene foam in order to use consistent language throughout the claims (see, e.g., claim 8 referring to “the neoprene foam layer”).
Regarding claims 2 and 5, the claims are not provided with a status identifier, as required by 37 CFR 1.121(c). The current status of all the claims in the application must be provided in a parenthetical expression following each claim number. See MPEP 714(II)(C). Claims 2 and 5 shown in the claim set filed 03/14/2026 are identical to the corresponding originally filed claims and thus are interpreted as having the status identifier “(Original)”.
Regarding claims 3, 9, 11, and 17, as explained above with respect to claims 2 and 5, the status identifier of each claim must be presented in a parenthetical expression. Subsequently filed claim sets should therefore provide the claim status identifiers in the proper form.
Regarding claim 5, it is suggested to amend the limitation reciting “wherein the first layer and the second layer form a sheet” to --wherein the neoprene foam layer and the polyurethane layer form a sheet-- in order to use consistent language throughout the claims. Although it is understood, for example, that the terms “second layer” and “polyurethane layer” used in claims 5 and 6 refer to the same feature (i.e., the second layer of polyurethane set forth in line 5 of claim 1), utilizing the same language throughout the claims would help improve the clarity of the claimed invention.
Regarding claim 8, the limitation reciting “wherein polyurethane layer” contains a typographical error that should be amended to recite --wherein the polyurethane layer--.
Appropriate correction is required.
Claim Interpretation
Regarding claims 1 and 16, the following limitations are interpreted as product-by-process limitations which only serve to limit the claimed product insofar as the method steps impart distinctive structural characteristics to the claimed product:
“a second layer of polyurethane forming a continuous solid layer bonded directly to the top surface of the neoprene foam without a primer”;
“wherein the polyurethane layer is formed from a liquid polyurethane mixture applied to the top surface of the neoprene foam and cured thereon while the neoprene foam is maintained in a substantially flat condition”;
“wherein the polyurethane layer is sanded after curing to a reduced thickness”; and
“wherein the polyurethane layer is routed after curing to form channels that at least partially expose the top surface of the neoprene foam”.
In the instant case, the above product-by-process limitations are interpreted as requiring that the polyurethane layer is made of a solid, cured polyurethane which is bonded directly to the top surface of the neoprene foam without a primer and that the polyurethane layer has channels formed therethrough such that the top surface of the underlying neoprene foam layer is exposed.
It is noted that the limitation reciting “a second layer of polyurethane forming a continuous solid layer” is interpreted in light of the limitation reciting “wherein the polyurethane layer is routed after curing to form channels that at least partially expose the top surface of the neoprene foam” to mean that the polyurethane layer forms a continuous solid layer as an intermediate structure thereof, which is subsequently processed to form channels therein. The final structure of the polyurethane layer therefore is solid but need not be continuous due to the presence of the channels. It is further noted that the limitation reciting “wherein the polyurethane layer is sanded after curing to a reduced thickness” is interpreted as not implying any specific structure to the product, as a polyurethane layer which is sanded to a reduced thickness is not structurally distinct from a polyurethane layer which has not been sanded to a reduced thickness. See MPEP 2113(I) for a discussion of claim interpretation for product-by-process limitations and MPEP 2113(II) for a discussion of the Applicant’s burden to show a nonobvious difference between a claimed product defined by a product-by-process claim and a prior art product produced by a different method.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 18 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 18, the limitation reciting “wherein the polyurethane layer has a plurality of channels formed therein that at least partially expose the neoprene foam” fails to further limit the subject matter of claim 16. Independent claim 16 recites “wherein the polyurethane layer is routed after curing to form channels that at least partially expose the top surface of the neoprene foam.” Although this limitation in claim 16 is formulated as a product-by-process limitation, whereas the limitation in claim 18 uses different language to set forth that the polyurethane layer has a particular structure, it is noted that the structure recited in claim 18 is already implicitly required by the product-by-process limitation in claim 16. Claim 18 therefore does not further limit the scope of the claimed subject matter.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 4-6, 8, 10, 16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Weisenberg (US 2017/0291389, previously cited) in view of Gardner (US 2020/0115563, newly cited).
Regarding claim 1, Weisenberg teaches a composite laminate surface covering member (composite marine decking assembly) comprising a first or upper layer (10; second layer of polyurethane) composed of polymer granules mixed with a urethane adhesive or bonding agent, and a second or sub-layer (11; first layer of neoprene foam) composed of a closed cell foam made of synthetic chloroprene rubber (e.g., Neoprene) (Abstract, [0020], [0024], Fig. 1). Weisenberg further teaches that the composite laminate can be used as a surface covering for horizontal support surfaces, such as for the deck members of a marine dock ([0002], [0018]).
As explained above, the limitations reciting that the polyurethane layer “[forms] a continuous solid layer bonded to the top surface of the neoprene foam without a primer”, “is formed from a liquid polyurethane mixture applied to the top surface of the neoprene foam and cured thereon while the neoprene foam is maintained in a substantially flat condition”, “is sanded after curing to a reduced thickness”, and “is routed after curing to form channels” are product-by-process limitations referring to the method of making and/or processing the polyurethane layer and are not germane to the issue of patentability of the product unless the method imparts a distinctive structural characteristic to the product. See MPEP 2113(I). In the instant case, these product-by-process limitations are interpreted as requiring a structure in which the polyurethane layer is made of a solid, cured polyurethane which is bonded directly to the top surface of the neoprene foam without a primer and that the polyurethane layer has channels formed therethrough such that the top surface of the underlying neoprene foam layer is exposed.
Weisenberg further teaches that the upper layer (10; polyurethane layer) is formed by mixing polymer granules and a urethane adhesive or bonding agent to form a sludge, which is placed on the top of the sub-layer (11; neoprene foam layer) on a horizontal vibration bed, wherein the sludge mixture is screeded and then tamped and vibrated to the desired thickness and density, and the covering member is removed from the mold after curing [0024]. The upper layer of the covering member taught by Weisenberg is therefore bonded directly to the top surface of the sub-layer without a primer, wherein the urethane bonding agent either alone or in combination with the polymer granules can be taken to correspond to the claimed second layer of polyurethane which is formed of a solid, cured polyurethane. The polyurethane layer taught by Weisenberg possesses all of the structural features implied by the product-by-process limitations as set forth above except for the feature requiring that the polyurethane layer has channels formed therethrough to expose the top surface of the neoprene foam layer.
Gardner teaches a surface covering such as a traction pad for use on a surface of a boat, watercraft, recreational vehicle, pool deck, floor or wall surface, or other structure (Abstract). The surface covering comprises a first layer of material (102) and a second layer of material (108) attached to each other, wherein a portion (103) may be routed in the surface of the covering such that the routed portion (channels) extends through the first layer of material ([0018], Figs. 1-2). Gardner teaches that such routing may be advantageous, for example, if first and second layers of material are each of a different color, such that the routing through the first layer exposes the color of the second layer, creating a visible pattern or decoration ([0008], [0018]).
Given that Weisenberg teaches that the covering member can be cut to produce designs, patterns, images, or words ([0028]), 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 covering member of Weisenberg by forming a routed portion in the polyurethane upper layer to form channels that at least partially expose the top surface of the sub-layer, as taught by Gardner, in order to provide an ornamental pattern or decoration.
Regarding claim 2, Weisenberg in view of Gardner teaches all of the limitations of claim 1 above, and Weisenberg further teaches that the sub-layer may be provided with a mounting adhesive (12; transfer tape) which is applied to the side (bottom surface) of the sub-layer opposite the upper layer ([0021], [0024]).
Regarding claim 4, Weisenberg in view of Gardner teaches all of the limitations of claim 1 above. It is noted that the limitation reciting “wherein the channels are formed by CNC routing” is a product-by-process limitation and is not germane to the issue of patentability of the product unless the method imparts a distinctive structural characteristic to the product. See MPEP 2113(I). In the instant case, the method of forming the channels by CNC routing does not impart any structural characteristics to the product that would distinguish the product from one in which the channels were formed by another method. The covering member taught by Weisenberg in view of Gardner in which the urethane upper layer has a routed portion (channels) formed therein satisfies all of the structural features required by the claims.
Regarding claim 5, Weisenberg in view of Gardner teaches all of the limitations of claim 1 above, and Weisenberg further teaches that the composite laminate surface covering member may be in the form of a sheet (Abstract).
Regarding claim 6, Weisenberg in view of Gardner teaches all of the limitations of claim 5 above. Although Weisenberg does not expressly teach a thickness of the upper polyurethane layer, the reference does further teach that a typical surface covering member may be 0.125 to 3 inches (i.e., about 3.2 to 76 mm) in thickness, wherein the mixture used to form the upper layer is screeded to the desired thickness and density such that the upper layer retains a significant number of voids and irregular channels ([0024], [0028]). It would have been obvious to one of ordinary skill in the art to set a thickness of the second layer of polyurethane to an appropriate value, such as within the range of about 2 mm, in order for the layer to have a sufficient thickness and density to retain voids and channels to enable water drainage from the upper layer.
Regarding claim 8, Weisenberg in view of Gardner teaches all of the limitations of claim 1 above. As noted above with respect to claim 1, Weisenberg does not teach the polyurethane layer being routed, and Gardner is relied upon to address this feature. Although Gardner teaches that the routed portions can be used to create a desired visible pattern, such as designs, lettering, logos, patterns, or any other desired informational or decorative pattern or shape, by exposing the underlying second layer of material ([0018], [0025]), the combination of references does not expressly teach that the pattern is one that simulates a wood surface.
It would, however, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the routed portions in any pattern, such as a pattern simulating a wood surface, according to the desired aesthetic appearance of the product. With respect to aesthetic considerations such as the form of the routed channels (i.e., simulating a wood surface), it is noted that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. See MPEP 2144.04(I).
Regarding claim 10, Weisenberg in view of Gardner teaches all of the limitations of claim 1 above, and Weisenberg further teaches that the composite laminate surface covering member can be cut to any desired shape as required for installation [0028]. The composite laminate is capable of being cut into a plurality of individual panels, thus satisfying the limitation requiring that the composite marine decking assembly is configured to be cut into a plurality of individual panels.
Regarding claims 16 and 18, Weisenberg teaches a composite laminate surface covering member (composite marine decking assembly) comprising a first or upper layer (10; second layer of polyurethane) composed of polymer granules mixed with a urethane adhesive or bonding agent, and a second or sub-layer (11; first layer of neoprene foam) composed of a closed cell foam made of synthetic chloroprene rubber (e.g., Neoprene) (Abstract, [0020], [0024], Fig. 1). Weisenberg further teaches that the composite laminate can be used as a surface covering for horizontal support surfaces, such as for the deck members of a marine dock ([0002], [0018]).
As explained above, the limitations reciting that the polyurethane layer “[forms] a continuous solid layer bonded to the top surface of the neoprene foam without a primer”, “is formed from a liquid polyurethane mixture applied to the top surface of the neoprene foam and cured thereon while the neoprene foam is maintained in a substantially flat condition”, “is sanded after curing to a reduced thickness”, and “is routed after curing to form channels” are product-by-process limitations referring to the method of making and/or processing the polyurethane layer and are not germane to the issue of patentability of the product unless the method imparts a distinctive structural characteristic to the product. See MPEP 2113(I). In the instant case, these product-by-process limitations are interpreted as requiring a structure in which the polyurethane layer is made of a solid, cured polyurethane which is bonded directly to the top surface of the neoprene foam without a primer and that the polyurethane layer has channels formed therethrough such that the top surface of the underlying neoprene foam layer is exposed.
Weisenberg further teaches that the upper layer (10; polyurethane layer) is formed by mixing polymer granules and a urethane adhesive or bonding agent to form a sludge, which is placed on the top of the sub-layer (11; neoprene foam layer) on a horizontal vibration bed, wherein the sludge mixture is screeded and then tamped and vibrated to the desired thickness and density, and the covering member is removed from the mold after curing [0024]. The upper layer of the covering member taught by Weisenberg is therefore bonded directly to the top surface of the sub-layer without a primer, wherein the urethane bonding agent either alone or in combination with the polymer granules can be taken to correspond to the claimed second layer of polyurethane which is formed of a solid, cured polyurethane. The polyurethane layer taught by Weisenberg possesses all of the structural features implied by the product-by-process limitations as set forth above except for the feature requiring that the polyurethane layer has channels formed therethrough to expose the top surface of the neoprene foam layer. Weisenberg also differs from the claimed invention in that the reference teaches that the laminate surface covering member (composite marine decking assembly) can be used for horizontal support surfaces, such as for the deck members of a marine dock or other surfaces in outdoor marine environments ([0002], [0018]), but does not expressly teach a marine vessel comprising a hull and a deck extending over the hull, wherein the laminate surface covering member is applied over the deck of the marine vessel.
Gardner teaches a surface covering such as a traction pad for use on a surface of a boat, watercraft, recreational vehicle, pool deck, floor or wall surface, or other structure (Abstract). The surface covering comprises a first layer of material (102) and a second layer of material (108) attached to each other, wherein a portion (103) may be routed in the surface of the covering such that the routed portion (channels) extends through the first layer of material ([0018], Figs. 1-2). Gardner teaches that such routing may be advantageous, for example, if first and second layers of material are each of a different color, such that the routing through the first layer exposes the color of the second layer, creating a visible pattern or decoration ([0008], [0018]). Similar to Weisenberg, Gardner teaches that the first and second layer may comprise closed-cell foam, wherein the surface coating is intended to be attached to a surface to provide a desired effect such as cushioning to reduce impact, sound deadening, decoration, texturing, or other appearance enhancing features ([0008], [0016]). Gardner further teaches that the routed portion can be filled with a glow in the dark or photo-luminescent material, wherein the surface covering can be applied to the decking of a boat being operated at night such that the surface covering provides enough low level light to prevent tripping from fishing or other gear on the boat ([0005], [0018]).
Given that Weisenberg teaches that the covering member can be cut to produce designs, patterns, images, or words ([0028]), 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 covering member of Weisenberg by forming a routed portion in the polyurethane upper layer to form channels that at least partially expose the top surface of the sub-layer, as taught by Gardner, in order to provide an ornamental pattern or decoration. Moreover, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the routed surface covering member of Weisenberg in view of Gardner over a deck extending over the hull of a marine vessel, as suggested by Gardner, given that Weisenberg teaches the suitability of its surface covering for use as a non-slip floor covering for marine decking, and Gardner teaches that the routed surface covering can provide the decking with low light at night to prevent tripping.
Regarding claim 19, Weisenberg in view of Gardner teaches all of the limitations of claim 18 above. Although Weisenberg does not expressly teach a thickness of the upper polyurethane layer, the reference does further teach that a typical surface covering member may be 0.125 to 3 inches (i.e., about 3.2 to 76 mm) in thickness, wherein the mixture used to form the upper layer is screeded to the desired thickness and density such that the upper layer retains a significant number of voids and irregular channels ([0024], [0028]). It would have been obvious to one of ordinary skill in the art to set a thickness of the second layer of polyurethane to an appropriate value, such as within the range of about 2 mm, in order for the layer to have a sufficient thickness and density to retain voids and channels to enable water drainage from the upper layer.
Regarding claim 20, Weisenberg in view of Gardner teaches all of the limitations of claim 19 above. As noted above with respect to claim 16, Weisenberg does not teach the polyurethane layer being routed, and Gardner is relied upon to address this feature. Although Gardner teaches that the routed portions can be used to create a desired visible pattern, such as designs, lettering, logos, patterns, or any other desired informational or decorative pattern or shape, by exposing the underlying second layer of material ([0018], [0025]), the combination of references does not expressly teach that the pattern is one that simulates a wood surface.
It would, however, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the routed portions in any pattern, such as a pattern simulating a wood surface, according to the desired aesthetic appearance of the product. With respect to aesthetic considerations such as the form of the routed channels (i.e., simulating a wood surface), it is noted that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. See MPEP 2144.04(I).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Weisenberg (US 2017/0291389, previously cited) in view of Gardner (US 2020/0115563, newly cited) as applied to claim 1 above, and further in view of D’Franco Painting & Wallpaper (“Cabinet Paint- Urethane vs 2k Polyurethane vs Lacquer”, https://dfrancowallpaper.com/cabinet-paint-urathane-vs-2k-polyurathane-vs-lacquer/, Published February 12, 2025; hereinafter “D’Franco).
Regarding claim 7, Weisenberg in view of Gardner teaches all of the limitations of claim 1 above. Although Weisenberg teaches that the upper layer (10; second layer) is formed by mixing polymer granules and a polymeric adhesive such as a urethane to form a sludge, which is cured to form the upper surface of the surface covering member ([0011], [0024]), the reference does not expressly teach that the polyurethane is formed from a mixture having a ratio of about 77/23 of resin to hardener.
D’Franco teaches that a 2K (two-component) polyurethane consists of two parts: a polyol resin and an isocyanate hardener, which are mixed in specific ratios, prompting a chemical reaction that forms a very durable, tight molecular bond (p. 4). D’Franco teaches that such 2K polyurethane systems are useful as high-performance coatings, as they often achieve a high hardness and are more resistant to chemical spills, abrasions, and daily wear due to the chemical cross-linking (p. 4). D’Franco further teaches that resin and hardener must be mixed precisely according to the manufacturer’s ratio, where the mixing ratio is often in the range of 2:1, 3:1, or 4:1, depending on the product (p. 4-5). Mistakes in the mixing ratio can lead to improper curing or brittleness (p. 4).
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 composite laminate surface covering member of Weisenberg in view of Gardner by selecting a two-component polyurethane mixture having a ratio of resin to hardener of about 3:1 to 4:1 as the urethane material used in the upper layer, as taught by D’Franco, given that such conventional 2K polyurethane systems are known to achieve high hardness and durability. One of ordinary skill in the art would recognize that the mixing ratio of resin to hardener depends on the exact product used, and that typical ratios are in the range of about 77/23, or about 3:1 to 4:1.
Response to Arguments
Response-Drawings
The previous objection to the drawings is overcome by the Applicant’s amendment to paragraph [0037] of the specification clarifying that the reference numeral “40” shown in Fig. 4 is a primer, consistent with the original disclosure in paragraphs [0009] and [0016].
Response-Specification
The previous objection to the specification is overcome in part by the Applicant’s amendments to paragraphs [0032] and [0033] of the specification. However, the objection is maintained in part due to one of the two instances of the incorrect reference numeral remaining in paragraph [0032].
Response-Claim Objections
The previous objections to claims 18 and 20 are overcome by the Applicant’s amendments to the claims in the response filed March 14, 2026.
Response-Claim Rejections - 35 USC § 112
The previous rejections of claims 6-8, 11, and 18-20 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.
Response-Claim Rejections - 35 USC § 102 and 103
Applicant’s arguments, see pages 12-27 of the remarks filed March 14, 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 and 16, the previous rejections under 35 U.S.C. 102 based on Weisenberg and under 35 U.S.C. 103 based on Champion in view of Weisenberg are withdrawn, and Gardner is used as a secondary reference in combination with Weisenberg to address the new limitations directed to the polyurethane layer having channels formed therein that at least partially expose the neoprene foam. The Applicant’s arguments will be addressed insofar as they apply to the new grounds of rejection.
The Applicant argues on pages 13-14 that the upper layer in Weisenberg is a granular, porous, particle-based layer, not a continuous solid polyurethane layer, and that Weisenberg does not disclose or suggest forming a continuous cast polyurethane layer from a liquid mixture on top of a neoprene foam substrate.
These arguments are not persuasive. As explained in the prior art rejections above, the urethane bonding agent in the upper layer (10), either alone or in combination with the upper granules in the upper layer, corresponds to the claimed second layer of polyurethane. Similar to the instant invention, Weisenberg teaches that the bonding agent in the upper layer may be formed from a liquid adhesive which is cured after pouring into a form ([0011], [0024]), such that the structure resulting from the process taught by Weisenberg is substantially identical to the structure resulting from the claimed product-by-process limitations in that the polyurethane layer is both solid and continuous. It is noted that the term “continuous” does not preclude the presence of porosity or heterogeneity in the polyurethane layer, but rather implies that the polyurethane layer has a structure which extends in an uninterrupted manner.
Moreover, as explained in the claim interpretation section above, the limitation reciting “a second layer of polyurethane forming a continuous solid layer” is interpreted in light of the limitation reciting “wherein the polyurethane layer is routed after curing to form channels” to mean that the polyurethane layer is continuous in an intermediate form thereof but is not necessarily continuous when present in the final product as a result of the channels formed therein.
The Applicant further argues on pages 14-15 that amended claim 1 requires that the polyurethane layer is cured while the neoprene foam is maintained in a substantially flat condition, whereas Weisenberg discloses a different manufacturing technique in which a granular mixture is processed on a vibration bed so that the particles settle into place. In particular, the Applicant argues that a vibration bed used to orient granules in a porous upper layer is not the same as maintaining a neoprene foam layer flat while a liquid polyurethane layer cures thereon, and that Weisenberg contains no disclosure of the claimed flat-cure construction.
These arguments are not persuasive. As explained in the claim interpretation section above, the limitations directed to the polyurethane layer being cured while the neoprene foam is maintained in a substantially flat condition is a product-by-process limitation. As explained in MPEP 2113(I), 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 the instant case, the covering material taught by Weisenberg is made by a different process than that recited in the claim. However, the structure produced by the prior art process and the structure resulting from the claimed process are identical, such that the claimed method limitations do not patentably distinguish the claimed product from the prior art. Once a product appearing to be substantially identical is found and a prior art rejection is made, the burden shifts to the Applicant to show a nonobvious difference between the claimed product and the prior art product. See MPEP 2113(II). The Applicant’s remarks are directed to differences between the process of making the prior art product and the process of making the claimed product; these arguments are not persuasive because they do not clearly identify any specific structural differences between the claimed product and the prior art product.
The Applicant further argues on page 15 that amended claim 1 recites that the polyurethane layer is sanded to a reduced thickness after curing, and that Weisenberg contains no disclosure of sanding a cured polyurethane layer to reduce its thickness. Instead, the thickness of the upper layer in Weisenberg is controlled by screeding and vibrating the sludge before curing, which the Applicant argues does not produce a cured continuous polyurethane layer that is subsequently sanded.
These arguments are not persuasive for the reasons presented above. Specifically, the Applicant has not specifically identified any structural differences between the product resulting from the claimed product-by-process limitations and the prior art product. While it is acknowledged that Weisenberg does not teach that its cured polyurethane layer is sanded to a reduced thickness, the structure of the covering member taught by Weisenberg is considered to be substantially identical to a product in which the cured polyurethane layer has undergone sanding. It is noted that this limitation does not appear to imply the presence of any specific structural features with respect to the claimed product. For example, an infinitesimally small reduction in thickness could be considered “sanding to a reduced thickness”, wherein such a minute change would not be expected to impart a distinct structural characteristic to the claimed product.
The Applicant further argues on page 16 that amended claim 1 also recites that the polyurethane layer is routed to form channels that at least partially expose the top surface of the neoprene foam. This argument is persuasive, and Gardner is relied upon as a secondary reference to address this new limitation.
Finally, the Applicant argues on pages 16-17 that amended claim 1 recites that the continuous polyurethane layer is bonded directly to the top surface of the neoprene foam layer without a primer, whereas Weisenberg describes various adhesive arrangements and optional intermediate or reinforcing layers between components of the laminate in paragraphs [0021]-[0023] and [0025].
This argument is not persuasive. As acknowledged by the Applicant, Weisenberg discloses various embodiments in which the covering member may contain optional components such as a reinforcing intermediate layer (13) disposed between the upper layer (10; polyurethane layer) and the sub-layer (11; neoprene foam layer), or a reinforcing mounting layer (14) located on a bottom surface of the sub-layer (Figs. 3-5). However, Weisenberg does also disclose embodiments in which the reinforcing intermediate layer (13) is not present, such that the upper layer is formed directly on the sub-layer (Figs. 1-2). For example, paragraph [0011] in Weisenberg describes a process of forming the covering member by pouring the sludge mixture used to form the upper layer onto the sub-layer within a form and allowing the sludge mixture to cure such that the upper layer is bonded to the sub-layer.
The Applicant’s arguments on page 18 directed to the previous rejections of claims 4, 8, and 11 based upon Weisenberg in view of Krejci et al. have been considered but are moot because they do not address the new combination of references being used in the rejections above. However, the Applicant’s arguments directed to Krejci et al. with respect to the priority benefit dates will be addressed below for the purpose of clarifying the dates of prior art eligibility.
The Applicant argues on page 18 that Krejci et al. (US 2025/0319686) does not qualify as prior art against the presently pending claims because the present application claims priority to a provisional application filed February 13, 2024, whereas Krejci et al. claims priority to a provisional application filed April 10, 2024. The Applicant therefore submits that because the effective filing date of Krejci post-dates Applicant’s priority date, Krejci is not prior art under 35 U.S.C. 102(a)(1) or 102(a)(2), and that the features added to claim 1 are fully supported in the originally filed specification and provisional disclosure.
These arguments are not persuasive. The effective filing date of the presently pending claims is February 13, 2025, as the current claims do not receive the benefit of the provisional application filing date. Although the Applicant asserts that the new features added to claim 1 are fully supported by the provisional disclosure, the provisional application does not provide adequate support for all of the features of the claimed invention (e.g., wherein the first layer is formed of neoprene foam). The disclosure in the provisional application is directed to a composite marine decking comprising a layer of polyurethane formed on an EVA foam rather than on a layer of neoprene foam. For a claim in a later filed nonprovisional application to be entitled to the benefit of the filing date of the provisional application, the written description and drawings of the provisional application must adequately support the subject matter of the claim in the later filed nonprovisional application. See MPEP 211.05(I)(A).
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.
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/Rebecca L Grusby/Examiner, Art Unit 1785
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