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 Objections
Claim 80 is objected to because of the following informalities: The transitional phrase “wherein” appears to be missing. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 84, 90-94 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Specifically, claims 84, 90 and 91 appear to recite an embodiment that has both the accommodating space and the bottom groove. There appears to be no support for such embodiment in the specification or disclosure.
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 82-85, 87, 90-96 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.
Claim 82 is indefinite because of the use of the words “preferably” and the phrase “such us” as it is not known if the limitations recited after the words and phrases are part of the claimed subject matter.
Claim 84 is indefinite because it is unclear if the “accommodating space for accommodating a separate support structure” refers to the same “separate support structure” recited in claim 76, or if this is another one. If it is the same, proper antecedent basis must be provided. Further, it is unclear if the “accommodating space” is different and in addition to the bottom groove of claims 76.
Also, it is unclear which is the embodiment being claimed that has both accommodating spaces AND a bottom groove.
Claim 85 is indefinite because it is unclear if the “transverse bottom groove” is an additional groove to the “bottom groove” recited in claim 76. The transverse bottom groove of claim 85 is recited as configured to accommodate a separate support structure, just like the bottom groove of claim 76, therefore it appears to be reciting substantially the same subject matter.
Claims 87 and 94 are indefinite because of the use of the phrase “such us” as it is not known if the limitations recited after phrase are part of the claimed subject matter.
Claim 90 is indefinite because of the use of the phrase “in particular”. Further, claim 76, from which claim 90 depends, recites a separate support structure as part of the functional limitation of the bottom groove. It is unclear if the “at least one first support structure” of claim 90 is the same “separate support structure” recited in claim 76 or an additional one. Similarly, it is unclear if the accommodating space or bottom groove are the same ones referred to in claim 76, if so, proper antecedent basis must be provided. Also, it is unclear what is the embodiment being claimed that has both accommodating spaces AND a bottom groove.
Claim 91 is indefinite because it is unclear what is the embodiment being claimed that has both accommodating spaces AND a bottom groove. Further, proper antecedent basis must be given to the accommodating space and groove if it’s the same one recited in the preceding claim.
Claim 92 is indefinite because it is unclear if the interlockable or interlocked panels being claimed are the same “at least one panel” recited in claim 90. If so, proper antecedent basis must be provided. Also, claim 90 depends from claim 76 and claim 76 already recites first and second coupling profiles. Similarly, the bottom groove has already been claimed in claim 76, and the support structure has been claimed in claim 90, therefore proper antecedent basis must be given to the limitations of claim 92.
Claim 93 is indefinite because it is unclear what the first support surface is and how it is related to the first support structure or the panels.
Claim 95 is indefinite because of the use of the words “optionally” and the phrase “sin particular” as it is not known if the limitations recited after the words and phrases are part of the claimed subject matter.
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 76-96 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,523,046. Although the claims at issue are not identical, they are not patentably distinct from each other because they substantially overlap in scope and the claimed limitations can be transparently found in the patented claims.
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 76-80, 85, 86, 88, 89 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mei US 2006/0185297 A1 (hereinafter ‘Mei’).
In regard to claims 76 and 85, Mei teaches a panel (30/40) for composing a floor or wall covering, comprising:
a first edge (first long edge) which comprises a plurality of first coupling profiles (33b), and
a second edge located opposed to the first edge, which comprises a plurality of second coupling profiles (34b), wherein each second coupling profile is configured to engage interlockingly with at least one first coupling profile of an adjacent panel (see fig. 9), both in horizontal and vertical directions (note that the interlocking is horizontal as the panels can not be pulled away from each other, and vertically because leg 34b is inside portion 33b),
wherein said first edge and/or said second edge comprises at least one drainage segment (see fig. 5, the portion where the edge does not have the full length, or the solid portion over channel 36) which is free of coupling profiles to facilitate flow-through of water in between the first edge of said panel and a facing second edge of an adjacent panel, in coupled condition of said panels (per MPEP 2114, this portion of the edge is capable of draining water between adjacent panels), and
wherein the lower side of the panel comprises at least one bottom groove (36, see fig. 5) connecting the first edge and the second edge, wherein said bottom groove is configured to accommodate a separate support structure for supporting said panel (Note that groove 36 is fully capable of accommodating a support, in the same manner that it accommodates cable 60).
In regard to claim 77, Mei teaches the claimed invention wherein the at least one drainage segment is enclosed by adjacent coupling profiles (see fig. 5, note that the drainage segment is between two coupling profiles 34b).
In regard to claims 78 and 79, Mei teaches the claimed invention wherein at least one edge of the first and second edges comprises at least three coupling profiles (Seen in fig. 5), wherein a drainage segment is present in between each pair of adjacent first coupling profiles (see fig. 5, note that each drainage segment is between two coupling profiles 34b) and it’s a vertical plane defined by the edge (note that the segment is the vertical surface right over the channel 36).
In regard to claim 80, Mei teaches the claimed invention wherein each edge comprises at least one first drainage and they are partially aligned with each other such that said first drainage segment of said panel is facing said second drainage segment of an adjacent panel, in coupled condition of said panels (see figs. 5 and 9 -Note that when the panels are coupled the segments face each other and are aligned as noted by the dotted line in fig. 5).
In regard to claim 86, Mei teaches the claimed invention wherein the panel is hollow and encloses at least one internal, linear channel connecting a third and fourth edges (see channel 37), wherein said channel is located at a distance from both the lower and upper sides of the panel (See fig. 5), and wherein each of the third and fourth edge connects the first and second edges.
In regard to claim 88, Mei teaches the claimed invention wherein the panel is an outdoor decking panel. Note that per MPEP 2114, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, and the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus meeting all the structural limitations of the claim. The panel of Mei meets all the structural limitations of the claim thus it is fully capable of being installed as an outdoor decking panel.
In regard to claim 89, Mei teaches a covering composed of a plurality of interconnected panels as claimed in claim 76 (see Mei fig. 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.
Claims 81, 87 are rejected under 35 U.S.C. 103 as being unpatentable over Mei.
In regard to claim 81, Mei does not explicitly teach the drainage segment exceeds the length of at least one adjacent coupling profile.
However, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to modify the length of the segment and coupling profile so that the drainage segment is longer, as a matter of design choice and because doing so reduces the usage of material and cost.
In regard to claim 87, Mei teaches the panel is at least partially composed of at least one polymer material (see [0024]) but does not explicitly teach the material is enriched with at least one filler chosen from the group consisting of: wood chips, wood dust, wood fibre, hemp fibre, bamboo, cotton, coffee, glass fibre and mineral fillers.
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to provide the polymeric material of Mei enriched with at least one of the claimed materials so as to provide a reinforced polymer that is stronger and stiffer than just the plastic alone.
Claims 90-92, 94-96 are rejected under 35 U.S.C. 103 as being unpatentable over Mei in view of Andres US 2017/0254077 A1 (hereinafter ‘Andres’).
In regard to claim 90, Mei teaches, as best understood, a panel system comprising the panel of claim 76 (see fig. 6) but fails to teach at least one first support structure configured to be partially accommodated within at least one pair of aligned bottom groove in the lower side of said panel.
Andres teaches a panel system comprising a plurality of panels (1) and at least one support structure (3) configured to be partially accommodated within at least one pair of aligned accommodating spaces or bottom groove (7) applied in the lower side of the panel (see [0037]).
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to provide a support structure in the system of Mei, as taught by Andres, so as to improve durability of the panel and facilitate installation (see Andres [0013]).
In regard to claim 91, the combination of Mei/Andres teaches, as best understood, the claimed invention wherein at least one accommodating space of groove comprises at least one third coupling profile (Andres grove 7), and therein said support structure comprises at least one fourth coupling profile (fastening portion 5) configured to interlockingly engage with said third coupling profile, in horizontal and/or vertical direction (see Andres [0037]).
In regard to claim 92, the combination of Mei/Andres teaches, as best understood, the plurality of interlocked panels with first and second coupling profiles such that pairs of accommodating spaces or grooves are aligned to accommodate a part of at least one first support structure (see claim 76 rejection and Andres [0037]).
In regard to claim 94, the combination of Mei/Andres teaches, as best understood, the support structure comprises leveling feet (Andres 10).
In regard to claim 95, the Examiner takes the position that claimed method is necessitated by the system of the combination of Mei/Andres because the panels and first support structure are provided (second support structure is not required), the panels are interlocked as claimed and interlocked to the first structure as noted and rejected in claim 90 above.
In regard to claim 96, although not explicitly disclosed, a person of ordinary skill in the art would have found it obvious to level the support structures with respect to the subfloor so as to provide stability to the structure.
Allowable Subject Matter
Claims 82-84, 93 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
For claim 82, the prior art of record does not teach or suggest the panel recited in claim 76 having a specific structure of the first coupling profile comprising a tongue and the second coupling profile comprising a groove. The tongue extends horizontally and parallel to the panel and comprises at least one locking element on an upper side thereof. The groove comprising an upper and a lower lip, the lower lip extends beyond the upper lip and the lower lip comprises a downwardly facing recess that co-acts with the first locking element and the panels are coupled to each other by turning movement and interlocks the panels in vertical and horizontal direction, as recited within the context of the claim.
The Examiner notes that the interlocking between the coupling profiles recited in claim 82 is a well known interlocking mechanism between adjacent panels and commonly known in the art. However, said interlocking mechanism in combination with the structural elements set forth in claim 76 are not suggested as a whole by the prior art. In this regard, it is the Examiner’s view, based on a totality of the record, that it would not have been obvious to modify the relevant prior art to arrive at the claimed invention, as any modification of the prior art of record that would arrive at the claimed invention would require improper hindsight.
For claim 84, the prior art of record does not teach or suggest the panel recited in claim 76 having a specific structure of accommodating spaces and the bottom groove having a third coupling profile configured to interlockingly engage with a fourth coupling profile of said separate support structure, as recited within the context of the claim.
For claim 93, the prior art of record does not teach or suggest the panel recited in claim 76 in the system of claim 90 having a specific structure of a plurality of support structures that each interlockingly engages with a plurality of mutually interlocked panels, as recited within the context of the claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAOLA AGUDELO whose telephone number is (571)270-7986. The examiner can normally be reached 8AM - 5PM.
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/PAOLA AGUDELO/ Primary Examiner, Art Unit 3633
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