DETAILED ACTION
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 47-73 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 10914080. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-16 of US Patent 10914080 would anticipate claims 47-73 as they contain all the limitations of the current claims.
Claims 47-73 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11434647. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-17 of US Patent 11434647 would anticipate claims 47-73 as they contain all the limitations of the current claims.
Claims 47-73 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-46 of U.S. Patent No. 12203276. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-46 of US Patent 12203276 would anticipate claims 47-73 as they contain all the limitations of the current claims.
Claims 47-73 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11725397. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-15 of US Patent 11725397 would anticipate claims 47-73 as they contain all the limitations of the current claims.
Claims 47-73 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-61 of U.S. Patent No. 12352561. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-61 of US Patent 12352561 would anticipate claims 47-73 as they contain all the limitations of the current claims.
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 47- 53, 56-59, and 61-64 are rejected under 35 U.S.C. 103 as being unpatentable over Hahn et al (US Publication 20130333821) in view of Haftvani et al (US Patent 6350496), and Song (US Publication 20140329062).
a. As to claims 47-53, 58, 59, 61, 63, Hahn et al disclose a non-vinyl resilient flooring product comprising a backing layer (polyolefin), an ink layer, a tie layer and a wear layer as seen in figure 1. Figure 1. further shows there can be a plurality of backing layers. The backing film can be formed by an extruded film or sheet (paragraph 9). Hahn further discloses that a secondary backing layer (paragraph 31) can be applied (balancing layer). Hahn et al disclose that the ink layer can be applied to the decorative layer (substrate) formed of OPP (claim 26), which is applied to the backing layer, therefore the decorative layer will read on applicant’s substrate layer and the decorative layer can have a desired appearance and therefore will read on applicant’s claimed a coloring agent. Further the wear layer can be formed from PP or polyurethanes or PET (claim 22).
However this reference is silent to the use of a UV cured ink and polyurethane adhesive for the tie layer.
b. Haftvani et al discloses the use of digitally printing UV curable ink onto flooring to from a mosaic or image.
c. It would have been obvious to one of ordinary skill in the art to have modified Hahn with the use of digitally printing or UV cured ink as the ink layer as Hahn disclose the use of any conventional ink used within flooring and the inks as suggested by Haftvani would be a suitable alternative and provide the decorative image. See MPEP 2144.06.
d. Song discloses the use of hot melt adhesives with additives such as polyurethanes (uv cured) as adhesive layer within flooring.
e. It would have been obvious to one of ordinary skill in the art to have modified Hahn and Haftvani with the use of hot melt polyurethane as the tie layer as Hahn disclose the use of any conventional adhesives and wear layer within flooring. The adhesive and wear layer suggested by Song would be a suitable alternative and provide the desired adhesion and protection between the layers. See MPEP 2144.06.
Further Hanh in combination with Song and Haftvani discloses that the same materials can be used for the wear layers, the decorative layer, the tie layer and the backing layers. Therefore the wear layer will inherently exhibit pull values greater than about 7 pounds as determined by ASTM 3936 with 1 in by 6 in strip pulled at a rate of 2in/min for a pull distance of 2 in.
e. As to claims 56 and 57, Hahn discloses that the backing portion can be formed from LDPE (paragraph 31)
f. As to claim 62, Hahn, Haftvani and Song render claim 47 obvious for the reasons noted above, however is silent to a thickness of the substrate layer being 1 to 20 mil. It would have been obvious to one of ordinary skill in the art to have formed the substrate to have any thickness including a thickness of 1 to 20 mil as one of ordinary skill would know that a thinner layer would more flexible, cheaper and potentially allow shadowing of the underlayers while a thicker layer would be more expensive, more rigid and one would know how to adjust the layer depending upon the desired end use. See MPEP 2144.06 change in size.
g. As to claim 64, it should be noted that claim 64 is a product by process claim in that it defines how the protective layer was formed. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply the structure, and the reference discloses such a product. It is noted that the materials of the protective layer can be UV cured.
Claims 54-55 and 65-67, 69-73 are rejected under 35 U.S.C. 103 as being unpatentable over Hahn et al (US Publication 20130333821), Haftvani et al (US Patent 6350496), and Song (US Publication 20140329062) in view of Phan et al (US Publication 20110305886).
As to claims 54 and 55, Hahn, Haftvani and Song render obvious claim 47 for the reasons noted above, however are silent to a surface hardening agent.
Phan discloses the use of a high scratch and high wear resistance layer used within floor coverings. The layer is UV cured layer. The layer is made from acrylate materials with aluminum oxide.
It would have been obvious to one of ordinary skill in the art to have modified Hahn, Haftvani and Song and added an additional coating layer (scratch layer) of the UV cured protective layer of Phan because it would increase the overall protection of the floor covering as well as provide improved scratch and wear resistance to the covering.
As to claims 65-67, 69, and 71-73, Hahn et al disclose a non-vinyl resilient flooring product comprising a backing layer (polyolefin), an ink layer, a tie layer and a wear layer as seen in figure 1. Figure 1. further shows there can be a plurality of backing layers. The backing film can be formed by an extruded film or sheet (paragraph 9). Hahn further discloses that a secondary backing layer (paragraph 31) can be applied (balancing layer). Hahn et al disclose that the ink layer can be applied to the decorative layer (substrate) formed of OPP (claim 26), which is applied to the backing layer, therefore the decorative layer will read on applicant’s substrate layer and the decorative layer can have a desired appearance and therefore will read on applicant’s claimed a coloring agent. Further the wear layer can be formed from PP or polyurethanes or PET (claim 22).
However this reference is silent to the use of a UV cured ink and polyurethane adhesive for the tie layer and a scratch layer.
Haftvani et al discloses the use of digitally printing UV curable ink onto flooring to from a mosaic or image.
It would have been obvious to one of ordinary skill in the art to have modified Hahn with the use of digitally printing or UV cured ink as the ink layer as Hahn disclose the use of any conventional ink used within flooring and the inks as suggested by Haftvani would be a suitable alternative and provide the decorative image. See MPEP 2144.06.
Song discloses the use of hot melt adhesives with additives such as polyurethanes (uv cured) as adhesive layer within flooring.
It would have been obvious to one of ordinary skill in the art to have modified Hahn and Haftvani with the use of hot melt polyurethane as the tie layer as Hahn disclose the use of any conventional adhesives and wear layer within flooring. The adhesive and wear layer suggested by Song would be a suitable alternative and provide the desired adhesion and protection between the layers. See MPEP 2144.06.
Phan discloses the use of a high scratch and high wear resistance layer used within floor coverings. The layer is UV cured layer. The layer is made from acrylate materials with aluminum oxide.
It would have been obvious to one of ordinary skill in the art to have modified Hahn, Haftvani and Song and added an additional coating layer (scratch layer) of the UV cured protective layer of Phan because it would increase the overall protection of the floor covering as well as provide improved scratch and wear resistance to the covering
Further Hanh in combination with Song, PHam and Haftvani discloses that the same materials can be used for the wear layers, the decorative layer, the tie layer and the backing layers. Therefore the wear layer will inherently exhibit pull values greater than about 7 pounds as determined by ASTM 3936 with 1 in by 6 in strip pulled at a rate of 2in/min for a pull distance of 2 in.
As to claim 70, Hahn, Haftvani and Song render claim 65 obvious for the reasons noted above, however is silent to a thickness of the substrate layer being 1 to 20 mil. It would have been obvious to one of ordinary skill in the art to have formed the substrate to have any thickness including a thickness of 1 to 20 mil as one of ordinary skill would know that a thinner layer would more flexible, cheaper and potentially allow shadowing of the underlayers while a thicker layer would be more expensive, more rigid and one would know how to adjust the layer depending upon the desired end use. See MPEP 2144.06 change in size.
Claims 60 is rejected under 35 U.S.C. 103 as being unpatentable over Hahn et al (US Publication 20130333821), Haftvani et al (US Patent 6350496), Song (US Publication 20140329062), in view of Eisermann (DE 19735189 C2 which has been machine translated).
Hahn, Hafvani, Song render claim 47 obvious for the reasons noted above, however is silent to a whitened substrate.
Eisermann discloses a floor covering comprising a decorative layer with a top layer wherein the decorative layer comprises a white carrier film under the decorative image.
It would have been obvious to one of ordinary skill in the art to have modified Hahn, Hafvani, Song and added a whitened carrier layer/replaced the decorative layer under the ink as it would lead to a more aesthetically pleasing image as it would allow the ink to show up better as it would be a design choice for the end user. See MPEP 2144.06.
Claims 68 is rejected under 35 U.S.C. 103 as being unpatentable over Hahn et al (US Publication 20130333821), Haftvani et al (US Patent 6350496), Song (US Publication 20140329062), Phan et al (US Publication 20110305886) in view of Eisermann (DE 19735189 C2 which has been machine translated).
Hahn, Hafvani, Song and Phan render claim 65 obvious for the reasons noted above, however is silent to a whitened substrate.
Eisermann discloses a floor covering comprising a decorative layer with a top layer wherein the decorative layer comprises a white carrier film under the decorative image.
It would have been obvious to one of ordinary skill in the art to have modified Hahn, Hafvani, Song and Phan and added a whitened carrier layer/replaced the decorative layer under the ink as it would lead to a more aesthetically pleasing image as it would allow the ink to show up better as it would be a design choice for the end user. See MPEP 2144.06.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M POLLEY whose telephone number is (571)270-5734. The examiner can normally be reached Monday through Friday from 8am till 4:30 pm.
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/CHRISTOPHER M POLLEY/Primary Examiner, Art Unit 1785