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 .
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.
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.
Claims 2, 5, 16, and 19 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 2 and 16 are rendered indefinite because these claims recite components of the glaze coating in units of "parts" without specifying (i) what "parts" are being measured and (ii) what are they "parts" out of.
Claims 5 and 19 are rendered indefinite because these claims recite components of the nano hybrid resin in units of "parts" without specifying (i) what "parts" are being measured and (ii) what are they "parts" out of.
Claim Interpretation
For the purpose of examination, the parts of claims 2, 5, 16, and 19 are understood to be (i) parts by mass and (ii) based on a total of 100 parts.
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 1-5, 7-9, 13, and 15-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li (CN 117230957).
Note: since CN 117230957 was not published in the English language, citations in this action refer to US 2026/0168261, which is the published US national stage application claiming priority to the application published as CN 117230957.
Li is directed to decorative material suitably used as composite flooring (paragraph 0002).
In the embodiment of Example 1, first a 100 mm printed film and 300 mm transparent polymer film, both made of polyvinylchloride, were thermally bonded together (paragraph 0097). Then a surface glaze layer coating was applied onto a 100 mm polyethylene terephthalate film and cured with a mercury lamp to form a precoated film (paragraphs 0098-0099). The surface glaze layer coating was formed from a composition comprising: 20 parts of silicon carbide wear-resistant particles, 37 parts of a polyurethane acrylic resin, 20 parts of nano-hybrid resin, 2 parts of a photoinitiator, 20 parts of a reactive diluent, and 1 parts of auxiliary agents (paragraph 0098). The nano-hybrid resin is 82 parts photocurable resin, 15 parts nanoparticles, and 3 parts silane coupling agent (paragraph 0098). This composition (containing 20 parts of a nano-hybrid resin, which itself contains 15 mass% nanoparticles) contains 20×0.15 = 3 mass% nanoparticles. A radiation-cured layer coating is applied to the transparent polymer film (paragraph 0100) followed by: (a) applying the precoated film to the radiation-cured layer coating, (b) curing with a gallium lamp, then (c) removing the carrier film (paragraph 0101).
The printed film bonded to the transparent polymer film corresponds to pretreated substrate of the claims (the thermal bonding of the transparent polymer film corresponding to a pretreatment); the surface glaze layer coating corresponds to the glaze coating layer of the claims; the polyethylene terephthalate film corresponds to the transfer film of the claims; the radiation-cured layer coating corresponds to the adhesive layer of the claims.
Regarding claims 3 and 17, since one of ordinary skill in the art would expect Mohs hardness of a particle to be a function of the material from which the particle is made and since silicon carbide is recited as a suitable particle having a Mohns hardness of not less than 9, one of ordinary skill in the art would expect the silicon carbide particles of Li to inherently meet the limitations of claims 3 and 17.
Claim Rejections - 35 USC § 102 / 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 6, 12, 14, and 20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Li (CN 117230957).
Li teaches all the limitations of claims 6, 10-12, 14, and 20, as outlined above, except for: reporting the coating weight of the glaze coating (claims 6, 14, and 20), and specifying that the radiation-cured layer coating (i.e., the layer corresponds to the adhesive layer of the claims) is transparent (claim 12).
Regarding the first difference, while Li does not report a coating weight in units of g/m2, the surface glaze layer of Example 1 has a thickness of 10 mm, and Li does broadly teach that the surface glaze layer may have a thickness of 3 to 20 mm (paragraph 0025). One of ordinary skill in the art would expect a coating of this thickness to inherently satisfy the limitations of claims 6, 14, and 20 since both layers are formed from the same materials and designed to perform the same function (i.e., surface layer of flooring). Alternatively, it would have required no more than routine experimentation and ordinary skill to determine a suitable coating weight for the surface glaze layer and one of ordinary skill in the art would expect this to result in a coating weight satisfying the limitations of claims 6, 14, and 20 since both surface glaze layers are formed from the same materials and designed to perform the same function.
Regarding the second difference, while Li does not report that the radiation-cured layer coating is transparent, one of ordinary skill in the art would expect it to be inherently transparent to allow the layer of printing underneath it to be visible. Alternatively, it would have been obvious to use a transparent material as the radiation-cured layer coating to allow the printing underneath it to be visible.
Claim Rejections - 35 USC § 103
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Li (CN 117230957).
Li teaches all the limitations of claims 10 and 11, as outlined above, except for specifying a pretreatment substrate corresponding to one of the three pretreatment substrate of claims 10.
The substrate to which the surface glaze layer is applied in the embodiment of Example 1 is described as a printed film over which a transparent polymer film is bonded (paragraph 0097). This reads on the third pretreatment substrate of claim 10 with the 100 mm thick printed film corresponding to a plastic substrate overcoated with a printing film. It would have been obvious to one of ordinary skill in the art to ensure that the layer of printing is in contact with the transparent polymer film (rather than being on the backside of the printing film) to provide the printing with protection from scuffing during installation.
Regarding claim 11, the limitations of this claim are satisfied since the claim, while further limiting the plastic and inorganic boards of the first pretreatment substrate, does not require the pretreatment substrate to be the first pretreatment substrate.
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 13, 16-18, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-7 of copending Application No. 18/694,958 (reference application).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the inventions of instant claims 13, 16-18, and 20 represent a genus of which the inventions described by claims 1 and 5-7 of copending Application No. 18/694,958 are species since the substrates to which the composite flooring of the copending claims are applied are species of the pretreated substrate of the instant claims. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993).
Regarding claim 20, while copending Application No. 18/694,958 does not report a coating weight in units of g/m2, claim 7 recites that the surface glaze layer has a thickness of 3 to 20 mm. One of ordinary skill in the art would expect a coating of this thickness to inherently satisfy the limitations of claims 6, 14, and 20 since both layers are formed from the same materials and designed to perform the same function (i.e., surface layer of flooring). Alternatively, it would have required no more than routine experimentation and ordinary skill to determine a suitable coating weight for the surface glaze layer and one of ordinary skill in the art would expect this to result in a coating weight satisfying the limitations of claims 6, 14, and 20 since both surface glaze layers are formed from the same materials and designed to perform the same function.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 19 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 5-7 of copending Application No. 18/694,958 in view of Li (CN 117230957).
Claims 1 and 5-7 of copending Application No. 18/694,958 recite all the limitations of claim 19, as outlined above, except for the composition through which the nanoparticles of claim 6 are incorporated into the surface glaze layer.
Li is directed to decorative material suitably used as composite flooring (paragraph 0002). In the embodiment of Example 1, a surface glaze layer coating was applied onto a 100 mm polyethylene terephthalate film and cured with a mercury lamp to form a precoated film (paragraphs 0098-0099). The surface glaze layer coating contains nanoparticles that are incorporated into the glaze as part of a nano-hybrid resin that is 82 parts photocurable resin, 15 parts nanoparticles, and 3 parts silane coupling agent (paragraph 0098).
It would have been obvious to one of ordinary skill in the art to add the nanoparticles recited in claim 6 as part of a nano hybrid resin comprising 82 parts photocurable resin, 15 parts nanoparticles, and 3 parts silane coupling agent since Li shows that such a composition is known as a means for incorporating nanoparticles into a surface glaze for flooring and the courts have held the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See MPEP 2144.07.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday mornings, Eastern time.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787
