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 .
Claim Interpretation
Regarding claim 16, although shapes of the respective particles are not previously recited, particles are considered to implicitly have shapes. Accordingly, instances of “the shape” have sufficient antecedent basis. Applicant may prefer to use --a
Claim Objections
Claim 11 is objected to because of the following informalities. Appropriate correction is required.
Regarding claim 11, average diameters of the respective particles are not previously recited. Particles might be interpreted to implicitly have an average diameter. However, the recitation of an “average diameter” might also be interpreted to be a measure of spherical or approximately spherical particles, and no such shape of the particles is previously recited. Accordingly, to avoid any potential issue of insufficient antecedent basis, the examiner suggests --an
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 2-6, 13 and 18 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 claim 2, line 1, it is unclear if “recesses” refers to the recesses formed at the surface of the first finishing layer, the recesses formed at the surface of the second finishing layer, or both.
Regarding claim 2, it is unclear if “providing surface-altering agents”, i.e. plural surface-altering agents, requires providing plural such agents for the step of forming recesses at the surface of the first finishing layer, providing plural such agents for the step of forming recesses at the surface of the second finishing layer, or if this limitation is satisfied by providing an overall plurality of such agents for the combined steps of forming recesses at the respective surfaces of the first and second finishing layers.
Regarding claim 3, it is unclear if “material of the first and second finishing layers” indicates that each layer has a same material. The examiner suggests --repel respective materials-- in line 2 and --than the respective materials-- in line 3.
Regarding claims 5 and 6, these claims have a similar issue to that noted above in claim 3. The examiner suggests --respective materials-- in both of these claims. A corresponding change in claim 6 is needed for “is a UV-curing lacquer”. The examiner suggests --are s.-- or alternatively --comprise [[is]] a UV-curing lacquer.--.
Regarding claims 13 and 18, these claims have a similar issue to that noted above in claim 3. The examiner suggests --respective materials-- in both of these claims. A corresponding change in claim 18 is needed for “is” in line 2. The examiner suggests changing “is” to --are--.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-12, 14-15 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hansson (US 6991830).
Regarding claim 1, Hansson teaches a method for manufacturing panels having a substrate and a decorative top layer (Abstract), the decorative top layer including a printed motif and a transparent or translucent protective layer formed there above (column 6, lines 45-49; column 5, lines 1-28), the method comprising: providing the substrate including the printed motif (column 3, lines 43-51; column 6, lines 29-31 and 42-48; column 9, lines 4-8; Examples); applying a first finishing layer for forming a first portion of the protective layer; forming recesses at a surface of the first finishing layer; applying a second finishing layer on top of the first finishing layer for forming a second portion of the protective layer (column 9, line 42 to column 10, line 4); and forming recesses at a surface of the second finishing layer (column 1, lines 24-39; column 5, lines 40-55; column 9, lines 42-67).
Regarding claims 2 and 4, Hansson teaches forming the recesses with surface structure-altering lacquer-repelling agents (column 5, lines 45-55; column 6, lines 4-12; column 9, lines 42-55).
Regarding claim 3, the lacquer repelling agent of Hansson is considered a chemical agent, and it repels applied lacquer to form recesses in the first and second finishing layers (column 9, lines 42-67; column 5, lines 45-55). The repelling agent is a lacquer similar to the finishing layers, but with an added silicone polymer (column 5, lines 56-59; column 6, lines 4-9), which would be implicitly expected to lower the surface tension below that of the respective materials of the first and second finishing layers because silicone has a low surface tension.
Regarding claim 5, Hansson teaches the surface structure-altering agents are chemical agents that break open material of the first and the second finishing layers (column 5, lines 50-55; column 9, lines 42-67). The teachings of portions of the first and second finishing layers being repelled by the agents in addition to the fact that the panels of Hansson have surface structure including recesses implicitly indicates the claimed limitation of the chemical agents breaking open the respective materials of the first and second finishing layers.
Regarding claim 6, Hansson teaches the first and second finishing layers are UV-curing lacquers (column 9, lines 42-67).
Regarding claim 7, the recesses in the first and second finishing layers correspond to the printed motif (column 9, lines 58-59). It is noted that the recesses in the first and second finishing layers are formed by the same repelling agent, and thus are clearly formed at the same locations (column 9, lines 42-67; column 5, lines 60-55).
Regarding claim 8, Hansson teaches the first finishing layer includes hard particles (column 5, lines 1-28; column 12, lines 59-67; Examples).
Regarding claims 9-10, Hansson teaches embodiments in which a second layer is free of hard particles or a second layer includes hard particles (column 5, lines 23-28; column 9, lines 60-67; column 12, lines 59-67; Examples).
Regarding claim 11, Hansson teaches this limitation (column 5, lines 7-28; column 9, line 60 to column 10, line 4; column 12, lines 59-67; Examples).
Regarding claim 12, Hansson teaches sprinkling particles of up to 150 µm into a first finishing layer such that they are partly embedded (column 5, lines 7-20), which implicitly indicates the claimed protrusion. Hansson also indicates that such particles are only completely embedded after subsequent application of additional layers (Examples). In particular, for example, a 30 g/m2 first layer would have a thickness of about 30 µm (using a density of about 1 g/cm3). Subsequently sprinkled particles of 70 µm size would implicitly protrude from such a layer since the particles have a size significantly greater than the thickness of the layer. See the Examples in Hansson, which use the above noted layer thickness and particle size and other combinations where the applied particles have a size greater than the thickness of the layer.
Regarding claim 14, naturally the recesses in the first and second layers are at the same respective locations because it is the pattern of printed lacquer repelling agent which forms such recesses.
Regarding claim 15, Hansson teaches partially hardening the first finishing layer before providing the second finishing layer (Examples).
Regarding claim 18, Hansson teaches this additional limitation (column 5, lines 1-6).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hansson as applied to claims 1-12, 14-15 and 18 above, and further in view of Stecker (US 6150009).
Claim 3 is rejected here in the alternative. Hansson does not recite that the lacquer repellent has lower surface tension than the material of the first and second finishing layers. In related art, Stecker teaches that a lacquer repellent may be formulated to have a lower surface tension than subsequently applied lacquer layers to suitably provide the repellent function (Abstract; column 2, lines 4-47; column 4, lines 22-31). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide this limitation in Hansson because one of ordinary skill in the art would have been motivated to provide the desired lacquer repellent function in a known suitable manner, as evidenced by Stecker.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Hansson as applied to claims 1-12, 14-15 and 18 above, and further in view of Chen (US 2004/0086678).
Regarding claim 13, while not taught by Hansson, Chen teaches this limitation in related art to achieve a desired contrasting or dual gloss coating (paragraph 46). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide this limitation in Hansson because one of ordinary skill in the art would have been motivated to provide a known desired contrasting or dual gloss coating in accordance with the teachings of Chen.
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Hansson as applied to claims 1-12, 14-15 and 18 above, and further in view of Gottzmann (US 2007/0287004 A1).
Regarding claim 16, Hansson does not teach the shape of the hard particles in the second finishing layer is different than the shape of the hard particles in the first finishing layer. In related art, Gottzmann suggests providing multiple finishing layers with a mix of particles comprising elliptical platelet shaped hard particles and spherical particles (Abstract; paragraphs 29-33 and 42-43). Claim 16 only requires each layer has particles with different shapes, and it does not preclude each layer from also having particles with the same shape; i.e. providing each layer in Hansson with the particle mix of Gottzmann provides spherical particles in one of the first or second finishing layers and elliptical platelet shaped hard particles in the other of the first and second finishing layers, which satisfies claim 16. Gottzmann teaches this hard particle mix provides superior clarity, scratch resistance, abrasion resistance as compared to using only conventional spherically shaped particles (paragraphs 14 and 31). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this additional limitation in Hansson because one having ordinary skill in the art would have been motivated to achieve the above noted benefits in accordance with the teachings of Gottzmann.
Regarding claim 17, the elliptical platelet shaped hard particles of Gottzmann are considered to be oblong. Either of these alternatives is satisfied for the reasons provided above. As noted above, the claims do not preclude a mix of oblong and spherical particles in each of the first and second finishing layers.
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 1-2, 7-8, 13-15 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-13 of U.S. Patent No. 11,794,460 (the ‘460 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the current claims is clearly satisfied by a corresponding claim of the ‘460 Patent.
Claims 1-9, 13-15 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,794,460 (the ‘460 Patent) in view of Hansson. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Regarding claim 1, claim 1 of the ‘460 Patent clearly recites all of these limitations except forming recesses at a surface of the second finishing layer. However, Hansson suggests this limitation for providing a desired surface structure (column 5, lines 45-55; column 6, lines 21-37; column 9, lines 42-67). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this limitation in claim 1 of the ‘460 Patent because one having ordinary skill in the art would have been motivated to provide a desired surface structure as suggested by the teachings of Hansson.
The additional limitations of claims 2-9, 13-14 and 18 are clearly satisfied by corresponding claims of the ‘460 Patent. Regarding claim 7, claim 8 of the ‘460 suggests this further limitation. It is clear from Hansson that the recesses in the first and second finishing layers are at the same locations because they are formed by the same applied repelling agent. Claim 14 is also satisfied for this reason.
Regarding claim 15, while not recited in the ‘460 Patent claims, Hansson suggests this additional for suitably providing the first and second finishing layers (column 8, lines 5-12; Examples). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this limitation in claim 1 of the ‘460 Patent because one having ordinary skill in the art would have been motivated to suitably form the finishing layers as suggested by the teachings of Hansson.
Claims 1-15 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,251,916 (the ‘916 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the current claims 1-15 and 18 is clearly satisfied by a corresponding claim of the ‘916 Patent.
Claims 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-10 of U.S. Patent No. 12,251,916 (the ‘916 Patent) in view of Gottzmann. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Regarding claims 16-17, claim 16 depends on claim 10 and claim 17 depends on claim 11. The limitations of claims 10-11 are satisfied for the reasons provided above in the nonstatutory double patenting rejection of claims 1-15 and 18. As to the additional limitations of claims 16-17, Gottzmann is applied as above in the rejection of claims 16-17.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A TOLIN whose telephone number is (571)272-8633. The examiner can normally be reached 9:30 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip C. Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745
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