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
The following claim interpretations are outlined for clarity of the record:
Claim 1 introduces a decorative panel in line 1. Throughout the claims, references to “the panel” are considered to refer to the previously introduced decorative panel because only one type of panel has been introduced in the claims.
Claim 1 introduces laminated layers that are adhered to each other in line 3. Throughout the claims, references to “adhered layers” is considered to refer to these previously introduced laminated layers and “two adhered layers” is considered to refer to two of the laminated layers that are directly or indirectly adhered to each other (as introduced in line 13 of claim 1).
Claim 1 recites “the laminated structure” in line 12. This limitation is considered to refer to the previously introduced “structure of laminated layers” recited in line 3 because only one structure that is laminated has been introduced in the claims.
Claim 1 recites “the adhesive strength” in line 17 and throughout the claims, whereas adhesive strength is previously introduced as “an adjustable adhesive strength” in line 14. However, an adhesive has only one adhesive strength under a specific set of conditions, and therefore “the adhesive strength” recited throughout the claims is considered to refer to the previously introduced adjustable adhesive strength.
Claim 8 recites the switchable adhesive is adjustable by exposure to a pH modifying agent. Since claim 1 recites the switchable adhesive is adjustable by irradiation and/or a thermal treatment, claim 8 is considered to render the switchable adhesive adjustable by irradiation and/or a thermal treatment and by a pH modifying agent.
Claim 10 recites the switchable adhesive is adjustable by exposure to a solvent. Since claim 1 recites the switchable adhesive is adjustable by irradiation and/or a thermal treatment, claim 10 is considered to render the switchable adhesive adjustable by irradiation and/or a thermal treatment and by a solvent.
Claim 14 recites “said adhesive” in line 3. This limitation is considered to refer to the previously introduced switchable adhesive because only one adhesive has been introduced previously in the claims.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,280,581. Although the claims at issue are not identical, they are not patentably distinct from each other because they contain the following overlapping subject matter:
Instant claim 1 and claim 1 of the ‘581 patent both recite substantially identical limitations, except insofar that instant claim 1 recites “by exposing the switchable adhesive that is present between the two adhered layers to irradiation and/or a thermal treatment” whereas claim 1 of the ‘581 patent recites this exposure only as to irradiation. Since irradiation and thermal treatment may be in the alternative (i.e. “or”), claim 1 of the ‘581 patent anticipates instant claim 1. However, thermal treatment is also recited in claim 5 of the ‘581 patent and therefore this limitation is obvious in view of claim 5 of the ‘581 patent.
Instant claim 2 recites wherein the top layer and the core layer are directly or indirectly adhered to each other by said switchable adhesive. This limitation is not explicitly stated in the claims of the ‘581 patent but is considered to be obvious because claim 1 of the ‘581 patent recites at least two layers are directly or indirectly adhered to each other by a switchable adhesive and the only required layers (i.e. the only layers specified in the claim) are a core layer and a top layer provided on the upper side of the core layer either directly or indirectly.
Instant claim 3 and claim 1 of the ‘581 patent both recite wherein the top layer is at least partially permeable for irradiation used to adjust the strength of the switchable adhesive.
Instant claim 4 and claim 2 of the ‘581 patent recite substantially identical limitations.
Instant claim 5 and claim 3 of the ‘581 patent recite substantially identical limitations.
Instant claim 6 and claim 4 of the ‘581 patent recite substantially identical limitations.
Instant claim 7 and claim 5 of the ‘581 patent recite substantially identical limitations.
Instant claim 8 and claim 6 of the ‘581 patent recite substantially identical limitations.
Instant claim 9 and claim 7 of the ‘581 patent recite substantially identical limitations.
Instant claim 10 and claim 8 of the ‘581 patent recite substantially identical limitations.
Instant claim 11 and claim 9 of the ‘581 patent recite substantially identical limitations.
Instant claim 12 and claim 10 of the ‘581 patent recite substantially identical limitations.
Instant claim 13 and claim 11 of the ‘581 patent recite substantially identical limitations.
Instant claim 14 and claim 12 of the ‘581 patent recite substantially identical limitations.
Instant claim 15 and claim 13 of the ‘581 patent recite substantially identical limitations.
Instant claim 16 and claim 14 of the ‘581 patent recite substantially identical limitations.
Instant claim 17 and claim 15 of the ‘581 patent recite substantially identical limitations.
Instant claim 18 and claim 16 of the ‘581 patent recite substantially identical limitations.
Instant claim 19 and claim 17 of the ‘581 patent recite substantially identical limitations.
Instant claim 20 combines limitations from claims 1 and 17 of the ‘581 patent.
Allowable Subject Matter
Claims 1-20 are rejected on the ground of nonstatutory double patenting, as outlined above, but would be allowable if the double patenting rejection is overcome.
The following is a statement of reasons for the indication of allowable subject matter: As outlined as reasons for allowance of parent application 18/029,295, the closest prior art of record include disclosures of adhesive compositions that are switchable or selectively releasable. However, none of the disclosures suggest use of these starch-free adhesives for flooring or interconnectable panels. Search of the prior art did not yield a laminate panel having a layer that is clear enough to be permeable to irradiation and that one would desire to remove. Therefore, there lacks a prior art motivation to combine a conventionally known laminate panel with a switchable or selectively releasable adhesive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ishikawa et al. (US 2002/0094403) teaches a laminate with a peelable top layer. However, the laminate board is not taught to have opposite side edges with interconnecting profiles and is not clearly taught as being used in plurality (i.e. there lacks a motivation to provide this feature). The decorative plastic sheet (i.e. top layer) is not taught or obvious to be substantially rigid. The bond strength is controlled by the inclusion of microspheres, but it is not clear if the adhesive is free of starch and solvents.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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/KIM S. HORGER/Examiner, Art Unit 1784