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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: “said reinforcing layer is a high-strength polymer foam”, “the polymer foam is foamed PP”, “the reinforcing layer has a thickness in the range of 1-2 mm”, “the reinforcing layer has a thickness of 1mm”, “the reinforcing layer has a density of 100 kg/m3”, “an acoustic backing layer on a bottom surface of the panel”, “the acoustic backing layer comprises at least one padded layer”, “the acoustic backing layer has a thickness of 1 mm”, “the reinforcing layer is selected from the group consisting of ductile materials with high modulus of elasticity and high yield strength, and brittle materials with high modulus of elasticity and high breaking strength”, “the reinforcing layer comprises at least one of foamed olefin polymers, foamed PP, foamed PE, non-foamed PE, foamed polyurethane, carbon fiber, foamed PVC, polyurethane foam, or expanded polystyrene”, and “the high-strength polymer foam is foamed PP and the reinforcing layer has a thickness of about 1 mm”.
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.
Claim 13 is 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.
Claim 13 recites the “reinforcing layer comprises at least one of …non-foamed PE and carbon fiber” which renders the claim indefinite, since it is not clear how the reinforcing layer can comprise a non-foamed PE or a carbon fiber when claim 1, which claim 13 depends from, recites the “reinforcing layer is a high strength polymer foam”. It appears claim 13 recites different embodiments for the reinforcing layer. Appropriate correction is requested.
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 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,241,261. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. 12,241,261 encompass or include that which is recited in the present patent application.
Regarding claim 1, U.S. Patent No. 12,241,261 discloses a panel suitable for assembling a floor covering by mounting a plurality of said panels onto a substrate, wherein the panel has a substantially planar top side, and a substantially planar bottom side, at least four substantially linear side edges comprising at least one pair of opposite side edges, the panel having a layered structure which comprises: a core layer; a decorative top layer, applied onto a top surface of the core layer; wherein the decorative top layer shows a dimensional sensitivity to temperature and/or humidity fluctuations; characterized by a reinforcing layer, adhered to the top layer, wherein said reinforcing layer is a high-strength polymer foam (claims 1-3 and 9).
Regarding claim 2, U.S. Patent No. 12,241,261 discloses wherein the polymer foam is foamed PP (claim 12).
Regarding claim 3, U.S. Patent No. 12,241,261 discloses wherein the reinforcing layer has a thickness in the range of 1 - 2 mm (claim 1).
Regarding claim 4, U.S. Patent No. 12,241,261 discloses wherein the reinforcing layer has a thickness of 1 mm (claim 1).
Regarding claim 5, U.S. Patent No. 12,241,261 discloses wherein the reinforcing layer has a density of 100kg/m3 (claim 1).
Regarding claim 12, U.S. Patent No. 12,241,261 discloses the reinforcing layer is selected from the group consisting of ductile materials with high modulus of elasticity and high yield strength, and brittle materials with high modulus of elasticity and high breaking strength (claim 2).
Regarding claim 13, U.S. Patent No. 12,241,261 discloses the reinforcing layer comprises at least one of foamed olefin polymers, foamed PP, foamed PE, non-foamed PE, foamed polyurethane, carbon fiber, foamed PVC, polyurethane foam, or expanded polystyrene (claim 12).
Regarding claim 14, U.S. Patent No. 12,241,261 discloses the high strength polymer foam is foamed PP and the reinforcing layer has a thickness of about 1 mm (claims 1 and 12).
Claims 1-5 and 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,603,667. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. 11,603,667 encompass or include that which is recited in the present patent application.
Regarding claim 1, U.S. Patent No. 11,603,667 discloses a panel suitable for assembling a floor covering by mounting a plurality of said panels onto a substrate, wherein the panel has a substantially planar top side, and a substantially planar bottom side, at least four substantially linear side edges comprising at least one pair of opposite side edges, the panel having a layered structure which comprises: a core layer; a decorative top layer, applied onto a top surface of the core layer; wherein the decorative top layer shows a dimensional sensitivity to temperature and/or humidity fluctuations; characterized by a reinforcing layer, adhered to the top layer, wherein said reinforcing layer is a high-strength polymer foam (claims 1-4).
Regarding claim 2, U.S. Patent No. 11,603,667 discloses wherein the polymer foam is foamed PP (claim 3).
Regarding claim 3, U.S. Patent No. 11,603,667 discloses wherein the reinforcing layer has a thickness in the range of 1 - 2 mm (claim 5).
Regarding claim 4, U.S. Patent No. 11,603,667 discloses wherein the reinforcing layer has a thickness of 1 mm (claim 5).
Regarding claim 5, U.S. Patent No. 11,603,667 discloses wherein the reinforcing layer has a density of 100kg/m3 (claim 6).
Regarding claim 12, U.S. Patent No. 11,603,667 discloses the reinforcing layer is selected from the group consisting of ductile materials with high modulus of elasticity and high yield strength, and brittle materials with high modulus of elasticity and high breaking strength (claim 3).
Regarding claim 13, U.S. Patent No. 11,603,667 discloses the reinforcing layer comprises at least one of foamed olefin polymers, foamed PP, foamed PE, non-foamed PE, foamed polyurethane, carbon fiber, foamed PVC, polyurethane foam, or expanded polystyrene (claim 3).
Regarding claim 14, U.S. Patent No. 11,603,667 discloses the high strength polymer foam is foamed PP and the reinforcing layer has a thickness of about 1 mm (claims 1, 3 and 5).
Claims 6-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,241,261 in view of Hodgkins et al. (WO2018187329A1).
U.S. Patent No. 12,241,261 discloses the claimed panel as shown above but fails to teach an acoustic padded backing layer comprising irradiation crosslinked polyethylene, expanded polypropylene, expanded polystyrene or ethylene-vinyl acetate; the acoustic backing layer exhibiting a tensile strength of 0.2-1.4 MPa and having a thickness of 1mm; and the acoustic backing layer having a density between 65 kg/m3 and 300 kg/m3.
Hodgkins teaches that it is well known in the flooring art to have a floor panel include an acoustic padded backing layer comprising irradiation crosslinked polyethylene, expanded polypropylene, expanded polystyrene or ethylene-vinyl acetate, wherein the acoustic padded backing layer exhibits a tensile strength of 0.2-1.4 MPa, has a thickness of 1 mm, and has a density between 65 kg/m3 and 300 kg/m3 for the purpose of providing padding properties and improved dimensional stability to floor coverings under end use conditions (paragraphs [0083-0100]).
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 floor panel in U.S. Patent No. 12,241,261 to include an acoustic backing layer comprising irradiation crosslinked polyethylene, expanded polypropylene, expanded polystyrene or ethylene-vinyl acetate, wherein the acoustic backing layer exhibits a tensile strength of 0.2-1.4 MPa, has a thickness of 1 mm, and has a density between 65 kg/m3 and 300 kg/m3 as suggested by Hodgkins in order to provide the floor panel with padding properties and have improved dimensional stability under end use conditions.
Claims 6-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,603,667 in view of Hodgkins et al. (WO2018187329A1).
U.S. Patent No. 11,603,667 discloses the claimed panel as shown above but fails to teach an acoustic padded backing layer comprising irradiation crosslinked polyethylene, expanded polypropylene, expanded polystyrene or ethylene-vinyl acetate; the acoustic backing layer exhibiting a tensile strength of 0.2-1.4 MPa and having a thickness of 1mm; and the acoustic backing layer having a density between 65 kg/m3 and 300 kg/m3.
Hodgkins teaches that it is well known in the flooring art to have a floor panel include an acoustic padded backing layer comprising irradiation crosslinked polyethylene, expanded polypropylene, expanded polystyrene or ethylene-vinyl acetate, wherein the acoustic padded backing layer exhibits a tensile strength of 0.2-1.4 MPa, has a thickness of 1 mm, and has a density between 65 kg/m3 and 300 kg/m3 for the purpose of providing padding properties and improved dimensional stability to floor coverings under end use conditions (paragraphs [0083-0100]).
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 floor panel in U.S. Patent No. 11,603,667 to include an acoustic backing layer comprising irradiation crosslinked polyethylene, expanded polypropylene, expanded polystyrene or ethylene-vinyl acetate, wherein the acoustic backing layer exhibits a tensile strength of 0.2-1.4 MPa, has a thickness of 1 mm, and has a density between 65 kg/m3 and 300 kg/m3 as suggested by Hodgkins in order to provide the floor panel with padding properties and have improved dimensional stability under end use conditions.
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.
Claims 1, 2, 6, 7, 12 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsukawa et al. (JP2010229788A) [hereinafter Matsukawa].
Regarding claim 1, Matsukawa discloses a panel suitable for assembling a floor covering, wherein the panel has a substantially planar top side (Figs. 1-2), and a substantially planar bottom side (Figs. 1-2), at least four substantially linear side edges (Figs. 1-3; paragraphs [0075] and [0109]) comprising at least one pair of opposite side edges (Figs. 1-3; paragraphs [0075] and [0109]), the panel having a layered structure which comprises a core layer (base; paragraphs [0017-0018]), decorative top layer (decorative sheet), applied onto a top surface of the core layer, wherein the decorative top layer shows a dimensional sensitivity to temperature and/or humidity fluctuations, since it comprises a paper layer (paragraph [0030]), characterized by a reinforcing layer (foam layer), adhered to the top layer (Figs. 1-2), wherein the reinforcing layer is a high-strength polymer foam (claims 1 and 3; paragraphs [0020-0022]).
It is to be noted that the limitation “for assembling a floor covering by mounting a plurality of the panels onto a substrate” in claim 1 has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. The preamble “for assembling a floor covering by mounting a plurality of the panels onto a substrate” is merely reciting the intended use of the claimed structure and a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02.
Regarding claim 2, Matsukawa discloses the polymer foam is foamed PP (paragraph [0022]).
Regarding claim 6, Matsukawa discloses the panel further comprising an acoustic backing layer on a bottom surface of the panel (paragraph [0054]).
Regarding claim 7, Matsukawa discloses the acoustic backing layer comprising at least one padded layer (paragraph [0054]).
Regarding claims 12 and 13, Matsukawa discloses the reinforcing layer (foam layer) being selected from the group of ductile materials with high modulus of elasticity and high yield strength, and brittle materials with high modulus of elasticity and high breaking strength, comprising foamed olefin polymers, foamed polypropylene, expanded polystyrene or foamed polyethylene (paragraph [0022]).
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.
Claims 3, 4 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Matsukawa.
Matsukawa teaches the claimed panel as shown above, but fails to teach the thickness of the reinforcing layer being 1 mm or in the range of 1-2 mm. 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 thickness of the reinforcing layer in Matsukawa to be either 1 mm or in the range of 1-2 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art in absence of showing unexpected results. MPEP 2144.05 (II).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Matsukawa.
Matsukawa teaches the claimed panel as shown above, but fails to specifically teach the reinforcing layer (foam layer) having a density of 100 kg/m3. Matsukawa teaches the foam layer can include low-density polyethylene, linear low-density polyethylene, or medium-density polyethylene (paragraph [0022]) which all have low densities. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a material having a desirable density of 100 kg/m3 for the reinforcing layer in Matsukawa in order to provide the desired comfort for the user.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Matsukawa.
Matsukawa teaches the claimed panel as shown above, but fails to teach the thickness of the acoustic backing layer being 1 mm. 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 thickness of the acoustic backing layer in Matsukawa to be 1 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art in absence of showing unexpected results. MPEP 2144.05 (II).
Claims 8, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Matsukawa in view of Hodgkins et al. (WO2018/187329A1) [hereinafter Hodgkins].
Matsukawa teaches the claimed panel as shown above but fails to teach an acoustic backing layer comprising irradiation crosslinked polyethylene, expanded polypropylene, expanded polystyrene or ethylene-vinyl acetate; the acoustic backing layer exhibiting a tensile strength of 0.2-1.4 MPa; and the acoustic backing layer having a density between 65 kg/m3 and 300 kg/m3.
Hodgkins teaches that it is well known in the flooring art to have a floor panel include an acoustic backing layer comprising irradiation crosslinked polyethylene, expanded polypropylene, expanded polystyrene or ethylene-vinyl acetate, wherein the acoustic backing layer exhibits a tensile strength of 0.2-1.4 MPa and has a density between 65 kg/m3 and 300 kg/m3 for the purpose of providing padding properties and improved dimensional stability to floor coverings under end use conditions (paragraphs [0083-0100]).
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 floor panel in Matsukawa to include an acoustic backing layer comprising irradiation crosslinked polyethylene, expanded polypropylene, expanded polystyrene or ethylene-vinyl acetate, wherein the acoustic backing layer exhibits a tensile strength of 0.2-1.4 MPa and has a density between 65 kg/m3 and 300 kg/m3 as suggested by Hodgkins in order to provide the floor panel with padding properties and have improved dimensional stability under end use conditions.
Conclusion
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CATHERINE A. SIMONE
Examiner
Art Unit 1781
/Catherine A. Simone/Primary Examiner, Art Unit 1781
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