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 .
Double Patenting
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being
unpatentable over claims 1-81 of U.S. Patent No. 11,958,933. Although the claims at issue are
not identical, they are not patentably distinct from each other because both sets of claims are
drawn to floor or wall covering panels comprising a thermoplastic polyurethane core prepared
from a polyester polyol made in part from at least one or more recycled materials. The
patented claims do not require the particulars of at least one substrate and at least one
protective layer. However, it would have been obvious to the skilled artisan to include the
additional limitations comprising any type of substrate and any type of protective layer for
reasons such as protecting the polyurethane from abrasion, weather, and other factors.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being
unpatentable over claims 1-81 of U.S. Patent No. 12,331,152. Although the claims at issue are
not identical, they are not patentably distinct from each other because both sets of claims are
drawn to floor or wall covering panels comprising a thermoplastic polyurethane core prepared from a polyester polyol made in part from at least one or more recycled materials. The difference between the application claims 1-16 and the patent claims 1-19 lies in the fact that the patent claim includes many more elements (addition of a filler) and is thus much more specific. Thus, the invention of claims 1-19 of the patent is in effect a “species” of the “generic” invention of the application claims 1-16. Since application claims 1-16 are anticipated by claims 1-19 of the patent, they are not patentably distinct.
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 1-11 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Pub. No. 2020/0031991 to Queen et al.
As to claims 1 and 16, Queen discloses a floor or wall panel comprising a foamed or unfoamed thermoplastic polyurethane core sandwiched between a substrate and at least one protective layer on top of the thermoplastic core/coating (0207, 0204-0264) comprising the reaction product of a polyisocyanate and polyester polyol derived from recycled PET (Abstract).
As to claims 2-3, Queen discloses wherein the thermoplastic polyurethane includes additives including calcium carbonate filler (0147).
As to claim 4, Queen discloses wherein the thermoplastic polyurethane layer makes up at least about 25-65% of the thickness of the composite structure wherein the thickness ranges from ¼ inch to 1 inch (0196).
As to claims 5-6 and 11, Queen discloses multiple layers of thermoplastic polyurethane sandwiched between a substrate and protective layer, therefore the TPU would be considered a type of protective layer in a multi layered laminate (0163).
As to claim 7, Queen discloses a fiberglass layer located adjacent to the polyurethane layer (Figure 2a).
As to claim 8, Queen discloses decorative outer layers (0150) or both layers can be decorative (0156, 0229-0230).
As to claims 9-10, Queen discloses polyurethane foam underlayments positioned between the structural subfloor and flooring material (0186).
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 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2020/0031991 to Queen et al.
As to claims 12-15, Queen discloses a floor or wall panel comprising a foamed or unfoamed thermoplastic polyurethane core sandwiched between a substrate and at least one protective layer on top of the thermoplastic core/coating (0207, 0204-0264) comprising the reaction product of a polyisocyanate and polyester polyol derived from recycled PET (Abstract).
Regarding the claimed properties, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all the claimed ingredients. Therefore, the claimed effects and physical properties, i.e.flexural strength and residual indentation would implicitly be achieved by a composite with all the claimed ingredients. If it is the applicants’ position that this would not be the case: (1) evidence would need to be provided to support the applicants’ position; and (2) it would the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763
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