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 .
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 1-19 of U.S. Patent No. 12,350,865. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 1, 3-8, 16 and 17, claim 1 of the ‘865 patent claims a method for manufacturing a floorboard element comprising an at least partially recycled board layer, the method comprising: providing a pre-processed material from at least one weight-reduced preformed board element, wherein the pre-processed material comprises a thermoplastic material; providing a virgin material comprising a thermoplastic material; applying the pre-processed and virgin materials on a carrier by scattering; applying heat and pressure to the pre-processed material and the virgin material on the carrier in a double-belt press to form said board layer; and forming a floorboard element comprising the board layer, the method further comprising mixing the pre-processed material and the virgin material to provide a mixture and applying the heat and pressure to the mixture in said double- belt press, wherein, during the providing of the pre-processed material, the pre-processed material is more than 20 wt% of a total amount of material that is provided, wherein a degree of inorganic filler exceeds 60 wt% of a total weight in any or both of the pre-processed and the virgin materials, wherein the pre-processed material and the virgin material comprise PVC, and wherein the thermoplastic material is 12-55 wt% of a total weight for one or both of the pre-processed and the virgin materials. As such, the claim of the ‘865 patent effectively anticipates or renders prima facie obvious the claims.
As to claims 2, 9-15, 18 and 19, claims 2-19 of the ‘865 patent claim and reasonably suggest and correspond with the scope of the claims. Further, the selection of additional or alternative means of applying heat and pressure in the polymer processing art and taken in the context of the claims is understood to be a routine expedient that renders the scope of the claimed invention prima facie obvious. Further, selection of a particular kind of inorganic filler is understood to be a routine expedient in the art that renders the scope of the claimed invention prima facie obvious.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 4-8, 10-13 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Baumgartl et al. (US 5,476,628) alone or further in view of Muzzy (US 2003/0087973).
Regarding claim 1, Baumgartl et al. teach a method for manufacturing a board element comprising an at least partially recycled board layer, the method comprising: providing a pre-processed material from production waste, wherein the pre-processed material comprises a thermoplastic material (Abstract; col. 1, lines 4-11 and 33-36; col. 3, line 40-col. 4, line 6); providing a virgin material comprising a thermoplastic material (col. 1, lines 54-col. 2, line 6; col. 2, lines 31-36 “fresh thermoplastic”); applying heat and pressure to the materials in an extruder (col. 2, lines 47-65; col. 3, lines 6-18; col. 3, line 40-col. 4, line 5) and then pressing the material in a double-belt press to mold and shape the material to form said board layer (col. 3, lines 10-36); and forming a board element comprising the board layer (col. 3, lines 10-36). Baumgartl et al. teach amounts of pre-processed material within the claimed range are provided (col. 1, line 65 – col. 2, line 3). Baumgartl et al. teach 20-60 wt.% of glass fibers/filler are also employed as claimed (col. 1, line 65-col. 2, line 3). Overlapping ranges are prima facie obvious.
As to the claimed modulus of elasticity of the board layer being within a range of 3-7 GPa, paragraphs [0027], [0129] and [0130] of the published application, directed to the amount of pre-processed materials utilized, and paragraph [0030] of the published application, directed to the amount of fillers and plasticizers utilized, suggest these are the factors that produce the claimed and disclosed modulus of elasticity/Young’s modulus in the layer. Since Baumgartl et al. teach and render prima facie obvious the claimed and disclosed amounts and claimed and disclosed types of these materials, as well as the other limitations in the claim, it follows from a technical and rational basis that the same claimed effects and physical properties are also found and rendered prima facie obvious by the teaching of Baumgartl et al. The same materials have the same properties (see MPEP 2112.01 I and II). As such, the weight of the evidence of record supports the conclusion that the claim is properly rejected over Baumgartl et al.
Alternatively, regarding the claimed modulus of elasticity, Muzzy suggests controlling and optimizing the mechanical properties, including elastic/tensile modulus, by adjusting amounts of the different materials (paragraphs [0050], [0057] and [0073]; Table 4 – tensile modulus given in amounts within the claimed range; 3 GPa = approximately 435,000 psi; 7 GPa = approximately 1,015,000 psi). It would been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Baumgartl et al. and Muzzy and to have produced a board layer having a desired elastic/tensile/Young’s modulus, including values within the claimed range, by the method of Baumgartl et al., as suggested by Muzzy, for the purpose, as suggested by the references of achieving desired mechanical properties in the board layer. Muzzy suggests optimizing the modulus through control of the materials utilized. Optimizing the modulus to a desired value would be a routine expedient in view of this teaching (see MPEP 2144.05).
As to claim 2, Baumgartl et al. apply heat and pressure in an extruder (col. 3, line 6-13; col. 3, line 40-col. 4, line 5).
As to claims 4 and 5, Baumgartl et al. teach amounts of pre-processed material as claimed (col. 1, line 65-col. 2, line 3).
As to claim 6, Baumgartl et al. teach glass fibers/inorganic filler, as well as other fillers (col. 1, line 65-col. 2, line 6; col. 2, lines 27-30 and lines 52-59).
As to claims 7 and 8, Baumgartl et al. teach glass fiber fillers in amounts up to 60 wt. % and suggest the addition of further additives and fillers (col. col. 1, line 65-col. 2, line 6; col. 2, lines 27-30 and lines 52-59). The combined amount of the materials would be readily determined as a routine expedient and the teaching of Baumgartl et al. reasonably suggests a total amount greater than 60 wt.% or 75 wt. %.
As to claim 10, Baumgartl et al. do not teach plasticizers in amounts greater than 5 wt% are required. As such, Baumgartl et al. teach or reasonably render the scope of the claim prima facie obvious.
As to claims 11-13, Baumgartl et al. teach the pre-processed material is provided as stamping waste from stamping the sheet into an article (Example; col. 1, lines 3-12). This reasonably suggests removal from a “rear side”, from a “single layer” and “forming a groove”. (e.g. the article is stamped out and the waste is formed around the periphery of the article wherein a rear side and a groove are reasonably understood to be present).
As to claim 17, the board element of Baumgartl et al. is reasonably understood to be a floor element (e.g. having the required structure and capable of being used in this way).
As to claim 18, Baumgartl et al. teach laminating upper and/or lower layers to the board layer/GMT sheet (col. 3, lines 16-23).
As to claim 19, the board element of Baumgartl et al. is reasonably understood to be a floor element (e.g. having the required structure and capable of being used in this way).
Claims 3, 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Baumgartl et al. (US 5,476,628) alone or further in view of Muzzy (US 2003/0087973), as applied to claims 1, 2, 4-8, 10-13 and 17-19 above, and further in view of Muzzy (US 2003/0087973).
As to claims 3 and 15, Baumgartl et al. alone or in combination teach and suggest the method set forth above. Baumgartl et al. do not explicitly teach that the material also has heat applied in the double-belt press. However, Muzzy teaches an analogous method wherein the material provided to the double-belt press also has heat applied while in the press (Figure 2 (30) (50) (70) (72) (76) (100); paragraphs [0037] and [0053]). Muzzy teaches a temperature of 400°F/204°C is utilized (paragraph [0037]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Baumgartl et al. and Muzzy and to have applied both heat and pressure to the pre-processed material and virgin material in the double-belt press of Baumgartl et al., as suggested by Muzzy, for the purpose, as suggested by the references of effectively forming a laminated sheet material/board layer. Baumgartl et al. generally disclose a “final molding of shaping” step in a “double belt press” that can be used to form a “laminated” sheet material without providing details of how this is achieved. Muzzy analogous provides additional details showing how such molding/shaping in a double belt press is implemented to form a laminated sheet material.
As to claim 14, Baumgartl et al. mix the pre-processed and virgin/fresh materials in an extruder (col. 1, lines 37-65) and then are fed to the belt press. In combination with Muzzy, the belt press provides the claimed heat and pressure. The reason to combine the references is the same as that set forth above.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Baumgartl et al. (US 5,476,628) alone or further in view of Muzzy (US 2003/0087973), as applied to claims 1, 2, 4-8, 10-13 and 17-19 above, and further in view of Pervan (US 2013/0047536). Note: this is an alternative rejection of claims 11-13.
As to claims 11-13, Baumgartl et al. alone or in combination teach and suggest the method set forth above. Alternatively, to the extent the limitations set forth in the claims may intend for a narrower interpretation, Pervan teaches an analogous method wherein the grooves are formed at the rear side and the material that has been cut off may be recycled completely to produce a new core (paragraph [0103]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Baumgartl et al. and Pervan and to have cut grooves in a rear side of the element of Baumgartl et al. and to have recycled the cut off material and reused it in the method of Baumgartl et al., as suggested by Pervan, for the purpose, as suggested by Pervan of reducing the weight of a produced element/panel while effectively reusing the material in the process (Pervan: paragraphs [0015], [0017], [0103] and [0105]).
Claims 6-9 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Baumgartl et al. (US 5,476,628) alone or further in view of Muzzy (US 2003/0087973), as applied to claims 1, 2, 4-8, 10-13 and 17-19 above, and further in view of Schachtely et al. (US 2010/0029818). Note: this is an alternative rejection of claims 6-8.
As to claims 6-9 and 16, Baumgartl et al. alone or in combination teach and suggest the method set forth above. Baumgartl et al. do not teach an inorganic filler as claimed and disclosed (e.g. claim 9 materials) in amounts as claimed and disclosed (e.g. claim 8) wherein the thermoplastic material is PVC (e.g. claim 16). However, Schachtely et al. teach an analogous method wherein the fillers and polymers as claimed and disclosed are utilized (paragraphs [0029], [0033], [0092] and [0115]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Baumgartl et al. and Schachtely et al. and to have utilized the amounts and types of fillers and thermoplastic materials as claimed and disclosed in the method of Baumgartl et al., as suggested by Schachtely et al, for the purpose, as suggested by the references, of utilizing art recognized amounts and types of fillers and polymers to reduce costs and achieve desired final product properties.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Baumgartl et al. (US 5,476,628) alone or further in view of Muzzy (US 2003/0087973), as applied to claims 1, 2, 4-8, 10-13 and 17-19 above, and further in view of Gauchel et al. (US 6,093,359).
As to claim 16, Baumgartl et al. alone or in combination teach and suggest the method set forth above. Baumgartl et al. do not teach the materials comprise PVC as claimed. However, Gauchel et al. teach an analogous process wherein the GMT material comprises PVC (Abstract; col. 1, lines 6-30; col. 6, lines 26-50 – PVC, ABS or PP all are known suitable thermoplastics for GMT).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Baumgartl et al. with Gauchel et al. and to have utilized PVC materials as claimed in the method Baumgartl et al., as suggested by Gauchel et al., for the purpose, as suggested by the references, of effectively recovering and reusing waste materials from a variety of GMT materials, including those that utilize PVC, to produce additional elements.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Benjamin et al. (US 2014/0203472) in view of any one of Baumgartl et al. (US 5,476,628), Moore (US 2021/0245400), Jolitz et al. (US 2004/0178532) or Robertson (US 3,797,702).
Regarding claims 1 and 11-13, Benjamin et al. teach and suggest a method for manufacturing an at least partially recycled board layer for a board element (paragraphs [0100], [0105], [0121]-[0126]; also see MPEP 2111.02 regarding the effect of the preamble), the method comprising: providing a pre-processed material from waste, wherein the pre-processed material comprises a thermoplastic material (paragraphs [0100], [0105, [0124]); providing a virgin material comprising a thermoplastic material and a filler (paragraphs [0094]-[0110], [0124]); the pre-processed material being more than 10 wt% of a total amount of material that is provided (paragraphs [0096], [0099], [0100], [0105], [0124]), and applying heat and pressure to the pre-processed material and the virgin material to form the board layer (Figure 1; paragraphs [0014], [0024], [0025], [0035], [0060]-[0062], [0065]-[0072], [0114], [0116]), wherein the board layer has a modulus of elasticity within the range of 3-7 GPa (paragraphs [0121], [0123], [0124], [0126], [0133], and [0137]; 3-7 GPa equals approximately 435,000 – 1,015,000 psi), and wherein a degree of filler exceeds 40 wt% in any or both of the pre-processed and the virgin materials (paragraphs [0094]-[0110]).
Benjamin et al. not explicitly teach the recycled/pre-processed material utilized in the process comes from production waste (e.g. from the product being produced itself, such as a weight reduced preformed board element/panel as disclosed, including scrap/waste/trimming material formed from producing the board element/panel itself and including its constituent components). However, each of Baumgartl et al. (Abstract; col. 1, lines 4-11 and 33-36; col. 3, lines 40-col. 4, line 6), Moore (paragraphs [0005], [0006], [0011], [0033], [0048] and [0049]), Jolitz et al. (Figure 5 (298); Figure 10 (460); paragraph [0050]), and Robertson (Abstract; col. 1, line 5-col. 2, line 26; col. 6, line 18-col. 7, line 12) teach analogous polymeric molding processes for producing sheets/panels/board layers wherein scrap/waste/trim material from the article being produced is recycled back into the process of producing the article.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Benjamin and any one of the secondary references and to have recycled pre-processed thermoplastic and filler material from at least one weight-reduced preformed element of production waste and used it as claimed in the method of Benjamin et al., as suggested by any one of the secondary references, for the purpose, as suggested by the references, of finding a suitable use for the scrap/waste/trim produced during the process of producing the board element/panel of Benjamin et al. to thereby reduce manufacturing and waste disposal costs. Benjamin et al. teach that recycled/waste/scrap materials may be utilized in the process of producing the article. The secondary references more specifically point out that scrap/waste/trim material from the article itself that is being produced can be recycled and provide a more specific suggestion that these materials coming from the process of producing the article can be desirably recycled back into the process of producing the article. As set forth above, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to take the teaching of any one of the secondary references and to incorporate it into the method of Benjamin et al. to recycle the required material. In combination, each and every limitation set forth in the claim is taught and reasonably suggested.
As to claims 2, 3, 14 and 15 Benjamin et al. teach and suggest an extruder and a double-belt press as claimed (Figure 1; paragraphs [0014], [0024], [0025], [0035], [0060]-[0062], [0065]-[0072], [0113]-[0121]).
As to claims 4 and 5, Benjamin et al. teach and suggest recycled materials in amounts as claimed (paragraphs [0100], [0105], [0124]).
As to claims 6-9, Benjamin et al. teach fillers as claimed (paragraphs [0099]-[0108] – up to 75 wt.% fillers or more, [0124] – e.g. about 70 wt.% calcium carbonate).
As to claim 10, Benjamin et al. do not require plasticizers in amounts greater than 5 wt. % (paragraphs [0109]-[0112]).
As to claim 16, Benjamin et al. teach PVC (paragraphs [0095]-[0098]).
As to claim 17, Benjamin et al. teach a floor element (paragraphs [0121]-[0126]).
As to claim 18, Benjamin et al. teach providing a surface treatment/coating/additional layer to the layer (paragraphs [0079], [0081], and [0083]).
As to claim 19, Benjamin et al. teach a floor element (paragraphs [0121]-[0126]).
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Benjamin et al. (US 2014/0203472) in view of any one of Baumgartl et al. (US 5,476,628), Moore (US 2021/0245400), Jolitz et al. (US 2004/0178532) or Robertson (US 3,797,702), as applied to claims 1-19 above, and further in view of Pervan (US 2013/0047536). Note: this is an alternative rejection of claims 11-13.
As to claims 11-13, the combination teaches the method set forth above. Alternatively, to the extent the limitations set forth in the claims may intend for a narrower interpretation, Pervan teaches an analogous method wherein the grooves are formed at the rear side and the material that has been cut off may be recycled completely to produce a new core (paragraph [0103]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Benjamin et al. and Pervan and to have cut grooves in a rear side of the element of Benjamin et al. and to have recycled the cut off material and reused it in the method of Benjamin et al., as suggested by Pervan, for the purpose, as suggested by Pervan of reducing the weight of a produced element/panel while effectively reusing the material in the process (Pervan: paragraphs [0015], [0017], [0103] and [0105]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Baert et al. (US 2019/0040635) teach an analogous method that includes utilizing recycled materials (paragraph [0015]) to produce a panel with a modulus of elasticity that overlaps the claimed range (paragraphs [0006], [0083] and [0084]) that should be considered prior to replying to the Office Action. Hannig (US 2017/0157977) discloses the basic claimed process of manufacturing a board element and further suggest utilizing recycled materials as set forth in the prosecution history of the parent application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeff Wollschlager whose telephone number is (571)272-8937. The examiner can normally be reached M-F 7:00-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at 571-272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
Prosecution Insights