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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Objection and Examiner’s Interpretation
The objection below is repeated from the previous office action since “inner edge” is still recited in the claims. The word “edge” means a line or border at which a surface terminates; there is no “edge” in the interior of the tessellation prior to the shapes being cut.
Claims 8, 18, and 23 are objected to because of the following informalities: each of these claims recite “inner edge”, which is confusing when looking at Applicant’s figures. The limitations of claims 8, 18, and 23 are poorly worded and appear to be two incomplete thoughts put together. Given the figures presented and the limitations from claim 1 “dividing the tessellation outline into a plurality of internal two dimensional shapes...at least one of the plurality of shapes comprises an edge...” (claims 12 and 21 have limitations along the same lines), the limitation “inner edge” will be considered as an edge of one of the cut shapes that was located interior to the tessellation outline prior to being cut.
Appropriate correction is required.
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 1-25 are rejected under 35 U.S.C. 103 as being unpatentable over Assanti, US 4,217,740 in view of Jung, DE 38 00 487 A1 and Bertrand et al., US 2017/0174875 A1.
Regarding claim 12, Assanti teaches a method of installing a tiled natural stone surface, comprising:
cutting one or more stone slabs (Abstract and column 2 lines 27-30) to form blocks for forming floors (column 1 — Field of the Invention).
While Assanti’s blocks are not shaped to have a tessellation outline, Jung teaches a paving system and discloses determining a tessellation outline (outline of the shaded pieces combined in Figure 1), identifying a plurality of two dimensional shapes that form at least one set of shapes, wherein each set of shapes, when combined, form a tessellation outline comprising three or more sides (Figure 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Assanti’s blocks to be shaped to have a tessellation outline comprising three or more sides and dividing the tessellation outline into a plurality of internal two-dimensional shapes as an alternate design in view of Jung’s disclosure to allow greater versatility in laying out the blocks. The resulting combination includes the step of cutting one or more natural stone slabs into each of the plurality of shapes to form at least one set.
While the resulting combination fails to disclose cutting along a reference line and creating a removed portion, Bertrand teaches a pavement installation and discloses cutting laid pavers along a trim line (66 in Figure 10; [0039] lines 5-11) to yield a smooth periphery and removing the cut portions (so that an edger may be secured along the trim line if desired). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination to cut along a reference line that is along a line of the tessellated outline to make use of a line that is supposed to be cut anyway to minimize cut slivers and through that entire set of shapes and creating a removed portion in view of Bertrand’s disclosure if a straight, smooth periphery was desired in the pavement installation and design choice. The resulting combination includes arranging the remaining portion of at least one set of shapes that has been cut according to the tessellation outline and against a reference edge (the new peripheral edge).
While the resulting combination fails to explicitly disclose arranging the removed portion against an opposite side of an arrangement of a plurality of sets of shapes including the at least one set of shapes, Jung’s Figure 1 clearly shows a tessellation (the point of which is to have sets with outlines so that the bottom outline of one set fits perfectly with the top outline of the set below, and the same for the outlines and sets to the left and right) with repeating sets in order.
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One of ordinary skill in the art would recognize, that in Jung showing tessellations, that the cut-off/removed portions fit perfectly into the spaces at the opposite side, opposite reference line if one desired to create a pavement such as along the dashed lines as annotated by Examiner in the reproduction of Jungs Figure 1 above. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination in view of Jung’s further disclosure and Bertrand’s disclosure of creating a smooth periphery to arrange the removed portion against an opposite side of an arrangement of a plurality of sets of shapes including the at least one set of shapes to create an opposite reference edge to create a pathway between the reference edge and the opposite reference edge to have two straight, smooth peripheral edges and use the removed portions to minimize waste and costs.
Regarding claim 1, the resulting combination from claim 12 includes preparing the set of natural stone shapes for installation as a tiled surface by identifying the tessellation outline which has been predetermined to comprise three or more sides (the outline of the shaded portion in Jung’s Figure 1); dividing the tessellation outline into a plurality of internal two dimensional shapes (1, 2, 3, 4, and 5 in Jung’s Figure 1), wherein at least one of the plurality of shapes comprises the edge (bottom of shape 3) defining the reference line that is orthogonal or parallel to the repeating direction of installation; and cutting the one or more natural stone slabs into each of the plurality of shapes to form the plurality of sets.
Regarding claim 2, the resulting combination includes a first pair of the three or more sides forming a first concave vertex, and a second pair of the three or more sides forming a second convex vertex to define the tessellation outline as an irregular concave polygon.
Regarding claim 3, the resulting combination includes the first concave vertex and the first convex vertex being counterparts to each other such that in one set the first convex vertex aligns substantially with the first concave vertex in another set when the sets are laid adjacent one another.
Regarding claims 4 and 5, the inclusion of both claims proves a lack in criticality of whether the tessellation outline is divided into a set comprising an odd or an even number of internal asymmetrical two-dimensional shapes. The resulting combination includes the tessellation outline being divided into a set comprising an odd number of internal shapes, however it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to divide the tessellation outline into an even number of internal asymmetrical two-dimensional shapes based on design choice.
Regarding claim 6, the resulting combination includes each of the plurality of internal two- dimensional shapes being formed as an irregular convex polygon comprising all convex vertices.
Regarding claim 7, the resulting combination includes a pair of outer edges of the tessellation outline being parallel to each other, the pair of outer edges being reference lines. See Jung’s Figure 1 reproduced with Examiner’s annotations.
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Regarding claim 8, the resulting combination includes at least one of the plurality of shapes defining an inner edge between the pair of outer edges, the inner edge being parallel to the outer edges. See Jung’s Figure 1 reproduced on the following page with Examiner’s annotations.
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Regarding claim 9, the resulting combination includes the limitation since as shown in Jung’s Figure 1, an orthogonal reference line is incorporated into the plurality of shapes.
Regarding claim 10, the resulting combination includes the limitation, since as shown in Jung’s Figure 1, the plurality of shapes defines at least two reference lines that are orthogonal to each other. See Jung’s Figure 1 reproduced below with Examiner’s annotations.
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Regarding claim 11, the Examiner took Official Notice (in the parent application of which this application is a continuation; non-final office action dated 11/9/2022) that it is old and well-known to cut stone tiles or pavers to include gaps between a plurality of tiles or pavers. As stated in the following rejection (final rejection dated 5/3/2023) of the parent application, Applicant failed to challenge the Official Notice in their arguments. Under the guidelines of MPEP 2144.03, to adequately traverse Official Notice, an applicant must specifically point out the supposed errors in the Examiner’s action including stating why the noticed fact is not considered to be common knowledge or well-known in the art. A general allegation that the claims define a patentable invention without any reference to the Examiner’s assertion of Official Notice would be inadequate. Since applicant did not adequately traverse the Examiner’s assertion of Official Notice, the facts are now considered to be admitted prior art (MPEP 2144.03). Applicant’s traversal is considered inadequate because there was no reference to the Examiner’s assertion of Official Notice. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of the resulting combination to include gaps between the plurality of shapes when laid according to the tessellation outline for tolerances in cutting.
Regarding claim 13, while the resulting combination fails to disclose the method step of transporting the cut shapes from an offsite location to an onsite location wherein the stone surface is to be installed, stones that need to be cut are either cut onsite or offsite, those are the only two options. It has been held to be a matter of obviousness when choosing from a finite number of identified, predictable solutions. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method to transport the cut shapes from an offsite location to an onsite location where the stone surface is to be installed so that the not all of the cutting equipment needs to be transported to the onsite location also, and to save time onsite by only installing.
Regarding claim 14, the resulting combination includes at least one complete set of shapes is installed.
Regarding claim 15, the resulting combination includes determining a boundary edge since that is what would dictate where the reference line is, and cutting a portion from at least one of the internal shapes along at least one reference line.
Regarding claim 16, the resulting combination from claim 15 makes obvious the limitation claimed; it would be obvious to make a plurality of cuts along a plurality of reference lines if the boundary line desired was really long.
Regarding claim 17, the resulting combination from claim 12 includes a pair of outer edges of the tessellation outline being parallel to each other, the pair of outer edges being reference lines. See Jung’s Figure 1 reproduced below with Examiner’s annotations.
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Regarding claim 18, the resulting combination includes at least one of the plurality of shapes defines an inner edge (the line between shape 5 and shape 3 within the shaded portion as shown in Jung’s Figure 1) between the pair of outer edges, the inner edge being parallel to the outer edges.
Regarding claim 19, the resulting combination includes the limitations since as shown in Jung’s Figure 1, an orthogonal reference line is incorporated into the plurality of shapes.
Regarding claim 20, the resulting combination includes the limitation, since as shown in Jung’s Figure 1, the plurality of shapes defines at least two reference lines that are orthogonal to each other. See Jung’s Figure 1 reproduced below with Examiner’s annotations.
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Regarding claims 21-25, the method steps of the resulting combination from claims 12, 1, and 7-10 yield the tiled natural stone paving system claimed. In the interest of compact prosecution, Examiner wishes to highlight that the amended language appears to constitute a product by process limitation. In light of the above rejections which highlight the specific tessellations and forming thereof, it would appear that any process by which the recited pavers are made would read on an apparatus claim absent some specific distinct structure produced by the included method steps.
Response to Arguments
Applicant's arguments filed 7/25/2025 have been fully considered but they are not persuasive.
Applicant argues (on the page numbered “5”) that Assanti “teaches away” from the invention of the instant application because Assanti’s blocks have curved lines whereas Applicant’s have straight lines. This is not persuasive since Assanti was only relied on for the teaching of cutting slabs of slate or stone to form tiling, not for the shape of the tiles as claimed. Additionally, it does not constitute a teaching away from alternatives because the disclosure does not criticize, discredit, or otherwise discourage the solution claimed. In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Applicant further argues (on the page numbered “5”) that Assanti “fails to recognize the attributes of natural stone slab surfaces or suggest leveraging this attribute”. This argument is not persuasive because it is not in accordance with Assanti’s disclosure. As evidenced by Assanti’s specification, contrary to Applicant’s assertion, Assanti explicitly discloses that blocks can be cut from slabs of stone (Abstract) and discusses “creating a random decorative effect” (column 1 line 16). Applicant argues that Assanti does not teach a tessellating pattern, but Assanti was not relied on in the rejection for that teaching.
Applicant argues (on the page numbered “5”) that Jung does not include a reference line that would allow a removed portion to be recombined without further cuts. This pertains to a newly added limitation that has been addressed in the rejection above.
Applicant’s arguments against Hodson are moot since it is no longer relied upon in the rejection above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached Notice of References Cited sheet.
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 KATHERINE J CHU whose telephone number is 571 272-7819. The examiner can normally be reached M-F generally 9:30-5:30.
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/KATHERINE J CHU/Examiner, Art Unit 3671
/CHRISTOPHER J SEBESTA/Supervisory Patent Examiner, Art Unit 3671