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 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 7, 8, 10, 15, 16, 17 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 7: It is unclear what it means “for at least 70 percent of their circumference, are provided in the board”. What is a circumference in this instance? Claim 7 recites the limitation "the mechanical coupling means" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the mechanical coupling means" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 10: It is unclear how the device is bent in a coupled condition. What does it mean to be bent? Does it mean the lower lip is flexed in a different position when the two panels are in a connected condition?
Regarding claim 15: It is unclear how the space extends beyond the distal end of the upper lip when the space is below the tongue. Is it supposed to read “beyond the distal end of the lower lip”? It is assumed so and will be examined accordingly.
Claim 16 recites the limitation "the projection" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the protruding part" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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)(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.
Claim(s) 1, 2, 6, and 7 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Pallon (WO 2012/061300).
Referring to claim 1: Pallon teaches a panel (item 100), wherein this panel comprises a core (item 110) and a provided thereon decorative top layer (item 130), wherein the aforementioned core comprises a board; wherein the board comprises magnesium oxide and wood particles (paragraph 0022); wherein the aforementioned panel, on at least two opposite edges, is provided with coupling means allowing that two of such panels can be interlocked at the respective edges (items 210, 220).
Referring to claim 2: Pallon teaches all the limitations of claim 1 as noted above. Additionally, Pallon teaches wherein the aforementioned coupling means are realized in one piece with the aforementioned board (figure 2).
Referring to claim 6: Pallon teaches all the limitations of claim 1 as noted above. Additionally, Pallon teaches wherein at least one pair of horizontally active locking surfaces of the coupling means is realized at least partially in the board and/or wherein one or more pairs of vertically active locking surfaces are formed at least partially from material of the board (figure 1).
Referring to claim 7: Pallon teaches all the limitations of claim 1 as noted above. Additionally, Pallon teaches wherein the mechanical coupling means consist of milled profiles which, for at least 70 percent of their circumference, are provided in the board (figure 1).
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(s) 3-5, 11-14, 18, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pallon in view of Moriau (WO 97/47834).
Referring to claim 3: Pallon teaches all the limitations of claim 1 as noted above. Pallon does not teach wherein the coupling means provide a locking in horizontal direction H1 as well as in vertical direction V1. However, Moriau teaches wherein the coupling means provide a locking in horizontal direction H1 as well as in vertical direction V1 (figure 23).
It would have been obvious to one of ordinary skill in the art at the time of filing to create the device taught by Pallon with the connection taught by Moriau in order to lock in multiple directions to prevent movement that creates squeaks in a floor.
Referring to claim 4: Pallon teaches all the limitations of claim 1 as noted above. Pallon does not teach wherein the mechanical coupling means are realized substantially as a tongue and groove connection, wherein the groove is bordered by an upper lip and a lower lip. However, Moriau teaches wherein the mechanical coupling means are realized substantially as a tongue and groove connection, wherein the groove is bordered by an upper lip and a lower lip (figure 23).
It would have been obvious to one of ordinary skill in the art at the time of filing to create the device taught by Pallon with the specific coupling taught by Moriau in order to provide a tight connection with minimal movement between adjacent panels.
Referring to claim 5: Pallon and Moriau teach all the limitations of claim 4 as noted above. Additionally, Moriau teaches wherein the lower lip extends in horizontal direction to beyond the upper lip (figure 22). The extended lower lip aids in vertical connection.
Referring to claim 11: Pallon and Moriau teach all the limitations of claim 4 as noted above. Additionally, Moriau teaches wherein the lower lip comprises a standing portion (item 6) which can cooperate with a locking groove realized on the lower side of the tongue (figure 22).
Referring to claim 12: Pallon and Moriau teach all the limitations of claim 4 as noted above. Additionally, Moriau teaches wherein the lower lip extends in horizontal direction to beyond the upper lip, wherein one or more pairs of vertically active locking surfaces are formed from the material of the board, wherein the coupling means comprises vertically active locking surfaces between the lower side of the tongue and the upper side of the lower lip, wherein said vertically active locking surfaces are situated substantially on the protruding part of the lower lip, namely on that part of the lower lip which extends beyond the distal end of the upper lip (figure 23). The specific configuration allows for horizontal and vertical locking of adjacent panels.
Referring to claim 13: Pallon and Moriau teach all the limitations of claim 12 as noted above. Additionally, Moriau teaches wherein the coupling means further comprises vertically active locking surfaces between the upper side of the tongue and the lower side of the upper lip of the groove (figure 23). Specific locking surfaces prevent specific movement.
Referring to claim 14: Pallon and Moriau teach all the limitations of claim 12 as noted above. Additionally, Moriau teaches wherein the coupling means comprises further vertically active locking surfaces between the lower side of the tongue and the upper side of the lower lip, wherein the further vertically active locking surfaces are positioned vertically underneath the aforementioned upper lip (figure 23). Specific locking surfaces prevent specific movement.
Referring to claim 18: Pallon and Moriau teach all the limitations of claim 4 as noted above. Additionally, Moriau teaches wherein at least one pair of horizontally active locking surfaces of the coupling means is realized at least partially in the board, wherein the lower lip shows a standing portion which can cooperate with a locking groove realized on the lower side of the tongue, wherein the smallest width of the standing portion of the lower lip at the location of the horizontally active locking surfaces is at least 15% of the thickness of the board (figure 23). The specific coupling means provide a tight vertical and horizontal connection between adjacent panels.
Referring to claim 19: Pallon teaches a panel (item 100), wherein this panel comprises a core (item 110) and a provided thereon decorative top layer (item 130), wherein the aforementioned core comprises a board; wherein the board comprises magnesium oxide and wood particles (paragraph 0022); wherein the aforementioned panel, on at least two opposite edges, is provided with coupling means allowing that two of such panels can be interlocked at the respective edges (items 210 and 220); wherein the aforementioned coupling means are realized in one piece with the aforementioned board (figure 2); wherein at least one pair of horizontally active locking surfaces of the coupling means is realized at least partially in the board and/or wherein one or more pairs of vertically active locking surfaces are formed at least partially from material of the board (figure 2); wherein the mechanical coupling means allow a coupling by means of a turning movement W along the respective edges and/or a horizontal shifting movement S of the edges towards each other and/or a downward-directed movement of a male coupling part into a female coupling part (obvious from figure 2 would be a horizontal shifting movement). Pallon does not teach wherein the coupling means provide a locking in horizontal direction H1 as well as in vertical direction V1; wherein the mechanical coupling means are realized substantially as a tongue and groove connection, wherein the groove is bordered by an upper lip and a lower lip; wherein the lower lip extends in horizontal direction to beyond the upper lip; wherein the lower lip comprises a standing portion which can cooperate with a locking groove realized on the lower side of the tongue; wherein the lower lip extends in horizontal direction to beyond the upper lip, wherein one or more pairs of vertically active locking surfaces are formed from the material of the board, wherein the coupling means comprises vertically active locking surfaces between the lower side of the tongue and the upper side of the lower lip, wherein said vertically active locking surfaces are situated substantially on the protruding part of the lower lip, namely on that part of the lower lip which extends beyond the distal end of the upper lip. However, Moriau teaches wherein the coupling means provide a locking in horizontal direction H1 as well as in vertical direction V1 (figure 23); wherein the mechanical coupling means are realized substantially as a tongue and groove connection, wherein the groove is bordered by an upper lip and a lower lip (figure 22); wherein the lower lip extends in horizontal direction to beyond the upper lip (figure 22); wherein the lower lip comprises a standing portion which can cooperate with a locking groove realized on the lower side of the tongue; wherein the lower lip extends in horizontal direction to beyond the upper lip, wherein one or more pairs of vertically active locking surfaces are formed from the material of the board, wherein the coupling means comprises vertically active locking surfaces between the lower side of the tongue and the upper side of the lower lip, wherein said vertically active locking surfaces are situated substantially on the protruding part of the lower lip, namely on that part of the lower lip which extends beyond the distal end of the upper lip (figures 22 and 23).
It would have been obvious to one of ordinary skill in the art at the time of filing to create the device taught by Pallon with the connection means taught by Moriau in order to provide a stronger connection between adjacent panels that would reduce friction squeaks and lock the adjacent panels horizontally and vertically.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pallon.
Referring to claim 8: Pallon teaches all the limitations of claim 1 as noted above. Pallon does not teach wherein the mechanical coupling means allow a coupling by means of a turning movement W along the respective edges and/or a horizontal shifting movement S of the edges towards each other and/or a downward-directed movement of a male coupling part into a female coupling part. However, it would have been obvious to one of ordinary skill in the art at the time of filing to recognize that connecting the adjacent panels of Pallon in figure 2 would be accomplished by a horizontal shifting movement of the edges towards one another.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pallon in view of Applicant Admitted Prior Art (AAPA).
Referring to claim 9: Pallon teaches all the limitations of claim 1 as noted above. Pallon does not teach wherein, in a coupled condition of two of such panels, a tension force is obtained between the respective panels. However, Applicant admits it is known to have a tension force between respective panels (paragraph 0050).
It would have been obvious to one of ordinary skill in the art at the time of filing to create the device taught by Pallon with tension in order to create a tighter connection that would reduce squeaking between adjacent panels.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,525,268. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application requires fewer limitations and is therefore broader.
Allowable Subject Matter
Claims 15-17 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 as well as remediation of the Double Patenting rejection.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art of record being Pallon and Moriau do not teach the specific space, or specific lengths or distances.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK J MAESTRI whose telephone number is (571)270-7859. The examiner can normally be reached M-Th 7-3.
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/PATRICK J MAESTRI/Primary Examiner, Art Unit 3635
