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 .
Note
Independent claim 1 has the newly added subject matter in this CIP application. Thus, the effective filling date of independent claim 1 is 10/10/2023. See MPEP 2133.01.
Response to Arguments
Applicant’s arguments/remarks filed on 09/22/2025 have been fully considered.
With respect to the claim rejection(s) under 35 U.S.C. § 112(b), Applicant's amendment(s) to the claim(s) has/have overcome the claim rejection(s).
With respect to the claim rejection(s) under 35 U.S.C. § 103 based on Adams and Tarozzi, Applicant’s argues that the none of the cited references disclose or suggest “providing a primer to the top surface of the cured engineered stone before the step of printing, wherein the primer is a water-based primer”.
Applicant’s argument is not found persuasive. Paragraph [0041] of Adams reads:
Furthermore, the method can include the step of providing at least the surface to be printed with a primer, for example an ink adhesion promoter or a catalyst, before the step of printing itself. The primer can be for example acrylic, methacrylic, polyurethane, water based, solvent based, styrene. The primer can be provided by means of spray, rollers or any other suitable techniques
For at least the reasons set forth above, the claim rejection(s) under 35 U.S.C. § 103 based on Adams and Tarozzi are maintained.
With respect to the claim rejection(s) under 35 U.S.C. § 103 based on Grzeskowiak in view of Tarozzi and Sawatsky, Applicant’s arguments are moot in view of the new grounds of rejection presented in this Office action.
Claim Rejections - 35 USC § 103
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 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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-8 and 11-20 is rejected under 35 U.S.C. 103 as being unpatentable over Adams (US 20190099915 – of record) in view of Tarozzi (WO 2022172242A1 – of record).
Regarding claim 1, Adams discloses a method for manufacturing an engineered stone (P0001, Fig. 8), comprising the steps of:
providing a mixture comprising at least a particulate material and a binder (Abstract, claim 1);
adding a coloring agent to the mixture in such a manner to provide a basic décor (P0022, claim 9);
compacting the mixture (Abstract, claim 1);
curing the binder to form a cured engineered stone (P0028-0029, claim 1);
polishing a top surface of the engineered stone (P0033),
printing a pattern with at least one sublimation ink on a first surface of the cured engineered stone, the first surface being the top surface of the engineered stone (claim 1, P0037, 0104-0106);
…; and
providing a primer to the top surface of the cured engineered stone before the step of printing, wherein the primer is a water-based primer (P0041),
wherein the printing step comprises inkjet digital printing (claim 2, P0106),
wherein the printing step is performed after the curing step (P0033), and
wherein the basic décor and the printed pattern are both visible on at least the top surface of the engineered stone (P0024, P0033).
Adams discloses/envisions that the ink can be a sublimation ink (P0037); however, Adams fails to explicitly disclose a step of fixing the sublimation ink via application of heat and/or pressure.
In the same field of endeavor, methods for manufacturing engineered stones, Tarozzi discloses the technique of incorporating a step of printing a pattern (D) with at least one sublimation ink (“sublimation ink”) on a first surface (S) of a finished engineered stone (L), the first surface being a top surface of the finished engineered stone (pg. 5-7, claim 7, Fig. 2); fixing the sublimation ink via application of heat and/or pressure (device 3 comprises a means for fixing the sublimation ink: pg. 7, Fig. 2; wherein a person of ordinary skill in the art would have known/recognized that the ordinary/known means for fixing sublimation inks comprises/requires the application of heat and/or pressure in order to sublimate the sublimation ink: see prior art of record and ordinary of sublimating ink); wherein the printing step comprises inkjet digital printing (device 3 using in the printing step is described as an inkjet digital printer: pg. 6), wherein the printing step is performed after the curing/hardening the engineered stone (pg. 6, claim 1, Fig. 1), and wherein the basic décor (annotated BD) and the printed pattern (D) are both visible on at least the top surface of the engineered stone (annotated Fig. 2) for the benefit(s) of providing an additional decoration and/or finishing/improving decorations already present on the engineered stone (abstract, claim 1, pg. 6).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the method of Adams in view of Tarozzi by using a sublimation ink as the ink and fixing the sublimation ink via application of heat and/or pressure for the benefit(s) of providing an additional decoration and/or finishing/improving decorations already present on the engineered stone as suggested by Tarozzi. See MPEP §§ 2143 I C, 2143 I G, and/or 2144 II.
Regarding claim 2-8 and 11-20, Adams further teaches all the limitations of claims 2-8 and 11-20 (see all pages/disclosure of Adams).
Claim(s) 1-5, 8, 11, 13-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Grzeskowiak (US 20160221384 – of record) in view of Tarozzi (WO 2022172242A1 – of record), and further in view of Adams (US 20190099915 – of record) and/or Lin (CN 102765287A with English machine translation - attached).
Regarding claim 1, Grzeskowiak discloses a method for manufacturing an engineered stone (P0002, Fig. 7), comprising the steps of:
providing a mixture comprising at least a stone or particulate material and a binder (P0002);
adding a coloring agent (pigment, dyes, colorants) to the mixture in such a manner to provide a basic décor (P0002, 0024, 0046-0049);
compacting the mixture (P0050, Fig. 7);
curing the binder to form the engineered stone (P0050, Fig. 7);
polishing a top surface of the cured engineered stone (P0050, Fig. 7).
Grzeskowiak differs from the claimed invention in that Grzeskowiak fails to disclose a step of printing a pattern with at least one sublimation ink on a first surface of the engineered stone.
In the same field of endeavor, methods for manufacturing engineered stones, Tarozzi discloses the technique of incorporating a step of printing a pattern (D) with at least one sublimation ink (“sublimation ink”) on a first surface (S) of a finished engineered stone (L), the first surface being a top surface of the finished engineered stone (pg. 5-7, claim 7, Fig. 2); fixing the sublimation ink via application of heat and/or pressure (device 3 comprises a means for fixing the sublimation ink: pg. 7, Fig. 2; wherein a person of ordinary skill in the art would have known/recognized that the ordinary/known means for fixing sublimation inks comprises/requires the application of heat and/or pressure in order to sublimate the sublimation ink: see prior art of record and ordinary of sublimating ink); wherein the printing step comprises inkjet digital printing (device 3 using in the printing step is described as an inkjet digital printer: pg. 6), wherein the printing step is performed after the curing/hardening the engineered stone (pg. 6, claim 1, Fig. 1), and wherein the basic décor (annotated BD) and the printed pattern (D) are both visible on at least the top surface of the engineered stone (annotated Fig. 2) for the benefit(s) of providing an additional decoration and/or finishing/improving decorations already present on the engineered stone (abstract, claim 1, pg. 6).
PNG
media_image1.png
303
556
media_image1.png
Greyscale
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the method of Grzeskowiak in view of Tarozzi by incorporating the steps of printing a pattern a pattern with at least one sublimation ink on the top surface of the finished engineered stone and fixing the sublimation ink via application of heat and/or pressure, wherein the printing step comprises inkjet digital printing, wherein the printing step is performed after the curing step, and wherein the basic décor and the printed pattern are both visible on at least the top surface of the engineered stone for the benefit(s) of providing an additional decoration and/or finishing/improving decorations already present on the engineered stone as suggested by Tarozzi. See MPEP §§ 2143 I C, 2143 I G, and/or 2144 II.
However, the combination as applied above, fails to disclose a step of providing
a primer to the top surface of the engineered stone before the step of printing, wherein the primer is a water-based primer.
In the same field of endeavor, methods for manufacturing engineered stones, Adams discloses the technique of providing a primer to a surface such as a top surface of the engineered stone to be printed before the step of printing, wherein the primer is a water-based primer for the benefit(s) of promoting adhesion (P0041).
In the same field of endeavor, methods for manufacturing/printing engineered stones, Lin discloses the technique of providing a primer to a surface such as a top surface of an engineered stone (artificial stone) to be printed before the step of printing (Abstract, highlighted potions in pages 1-3), wherein the primer is a water-based primer (primer comprising open oil water) for the benefit(s) of promoting adhesion/absorption and/or improving quality (Abstract, highlighted potions in pages 1-3).
Official notice is taken that the technique of providing a primer on at least a surface to be printed before a printing step is a well-known technique in the art printing inks into substrates yielding the predictable result(s)/benefit(s) of increasing adhesion/absorption of the ink (See P0032 and claim 2 of US 20150103123 – of record or C7, L7-50 of US 7108890 – of record).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to further modify the method of Grzeskowiak in view of Adams and/or Lin by providing a primer on the top surface of the engineered stone before the printing step, wherein the primer is a water-based primer for the benefit(s) of promoting adhesion/absorption of the ink to the top surface of the engineered stone and improving printing quality as suggested by Adams and/or Lin. See MPEP §§ 2143 ID, 2143 1G and/or 2144 II.
Regarding claim 2, Grzeskowiak further discloses wherein the basic décor is a veined effect imitating a natural stone (P0046, Fig. 6).
Regarding claim 3, Grzeskowiak further discloses wherein said basic décor is formed by random color shades in the engineered stone (P0005, 0046, Fig. 6).
Regarding claims 4-5 and 8, Grzeskowiak fails to disclose a step of providing a protective layer. However, Tarozzi further discloses a step of providing a protective layer (providing a glaze coating) to at least partially coat at least the top surface (S) of the engineered stone, wherein the protective layer is transparent or translucent and is provided above the printed pattern (Fig. 3 shows that the glaze coating provided in coating station 9 above the printed pattern D is transparent/translucent as the printed pattern is still visible after exiting the coating station 9; additionally, glaze coatings for providing protection are known/required to be transparent/translucent in the art and the prior art of record), and curing and/or drying the protective layer (curing and/or drying in station 10) for the benefit(s) of protecting the printed pattern and/or enhancing gloss (pg. 10, Fig. 3).
Lin further discloses the technique of providing a protective layer to at least partially coat (topcoat) at least the top surface of the printed engineered stone, wherein the protective layer is a transparent layer and is provided above the printed pattern, wherein the protective layer comprises a hardened resin (drying or heat drying the sprayed transparent protective paint which is a PU paint or UV paint to form the protective layer), and wherein the hardened resin comprises an acrylic or epoxy resin (PU paints for protective coatings are known/recommended to comprise acrylic resin while UV paints for protective coatings are known/recommended to comprise epoxy resin) for the benefit(s) of providing protection and stable quality (Abstract, highlighted potions in pages 1-3).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the method of Grzeskowiak in view of Tarozzi and/or Lin by incorporating the step of providing a protective layer as claimed for the benefit(s) of protecting the printed pattern and/or enhancing gloss as suggested by Tarozzi and Lin. See MPEP §§ 2143 I C, 2143 I G, and/or 2144 II.
Regarding claim 11, Adams further discloses wherein the primer is provided by means of a spray or rollers (P0041). Lin further discloses wherein the primer is provided by means of a spray (Abstract, highlighted potions in pages 1-3).
Regarding claim 13, Tarozzi further discloses wherein the printed pattern (D) is applied at a fixed distance from a predetermined point/edge of the cured engineered stone (pg. 8, annotated Fig. 2).
Regarding claim 14, Tarozzi further discloses wherein the printing step comprises detection of an upcoming engineered stone via detection means 8, and using this detection to control a printer (pg. 9, Fig. 2).
Regarding claim 15, Tarozzi further discloses/shows matching the printed pattern (D) and the basis décor (annotated BD or decorations already present on the engineered stone) together to form a single image or decoration on the top surface of the engineered stone (pg. 6, annotated Fig. 2 above).
Regarding claim 16, Tarozzi further shows/suggests wherein the printed pattern (D) is a veined effect imitating a natural stone (Fig. 2: the produced slabs by the disclosed invention need to have aesthetic characteristics/effects such as gains/streaks comparable to natural stones/rocks such as marble: pg. 1).
Regarding claims 17 and 18, Grzeskowiak is silent about the heating temperature during the curing step. However, Tarozzi further discloses conducting a heating step at a temperature below 150° C during curing of the binder/stone for the benefit(s) of obtaining the finished engineered with suitable/desired mechanical and physical properties (pg. 4).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the method of Grzeskowiak in view of Tarozzi by conducting a heating step at a temperature below 150° C during curing of the binder/stone for the benefit(s) of using a suitable/known curing temperature and obtaining the finished engineered with suitable/desired mechanical and physical properties. See MPEP §§ 2143 I C, 2143 I G, and/or 2144 II.
Regarding claim 20, Grzeskowiak further discloses wherein the particulate material comprises a siliceous mineral material (quartz: P0022, 0024).
Claim(s) 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Grzeskowiak in view of Tarozzi, Adams, and Lin as applied to claim 4 above, alone or further in view of Sawatsky (US 20020064616 – of record).
Regarding claim 6-7, Grzeskowiak as modified above, fails to disclose wherein the protective layer comprises a hardened resin and the hardened resin comprises an acrylic or epoxy resin.
However, Lin further discloses the technique of providing a protective layer to at least partially coat (topcoat) at least the top surface of the printed engineered stone, wherein the protective layer is a transparent layer and is provided above the printed pattern, wherein the protective layer comprises a hardened resin (drying or heat drying the sprayed transparent protective paint which is a PU paint or UV paint to form the protective layer), and wherein the hardened resin comprises an acrylic or epoxy resin (PU paints for protective coatings are known/recommended to comprise acrylic resin while UV paints for protective coatings are known/recommended to comprise epoxy resin) for the benefit(s) of providing protection and stable quality (Abstract, highlighted potions in pages 1-3).
In an analogous art, decoration/coating of engineered stones, Sawatsky teaches to provide a protective layer to partially or entirely coat at least a printed surface of an engineered stone (Fig. 3, P0156, P0067-P0075), wherein the protective layer is a transparent or translucent layer and is provided above the printed pattern to provide sealing and protection (P0026, 0053, 0070), wherein the protective layer comprises a cured resin (P0137), wherein the cured resin comprises an acrylic resin (P0039, Fig. 3), and wherein the step of providing the protective layer comprises dispensing a curable resin and curing the curable resin so as to form the protective layer (P0080, 0132, 0137, and Fig. 3) for the benefit(s) of hermetically sealing and protecting the printed pattern and other material other underlying materials (Abstract, P0026, and 0072-0074).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to further modify the method of Grzeskowiak in view of Lin and/or Sawatsky by using a curable acrylic/PU resin for the protective layer, dispensing the curable resin and hardening the curable resin so as to form the protective layer to partially or entirely coat at least the top surface of the engineered stone for the benefit(s) of hermetically sealing the printed pattern and protecting the printed pattern as suggested by Lin and Sawatsky. See MPEP §§ 2143 ID, 2143 1G and/or 2144 II.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grzeskowiak in view of Tarozzi, Adams, and Lin as applied to claim 4 above, and further in view of Newman (GB 376284A – of record).
Regarding claim 12, Tarozzi further discloses/envisions providing finishing steps to the engineered stone after the protective layer has been provided (pg. 6-7), but Tarozzi/combination fails to explicitly disclose a finishing step comprising polishing the surface of the engineered stone after the protective layer has been provided.
In the same field of endeavor, methods for manufacturing engineered stones, Newman discloses the technique of incorporating a finishing step comprising polishing a surface of an engineered stone after a protective layer has been provided to it for benefit(s) of obtaining a protected, highly polished, and desirable engineered stone (pg. 2, claim 1).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to further modify the method of Grzeskowiak in view of Newman by incorporating a finishing step comprising polishing a surface of an engineered stone after a protective layer has been provided to it for benefit(s) of obtaining a protected, highly polished, and desirable engineered stone. See MPEP §§ 2143 IC, 2143 IG and/or 2144 II.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grzeskowiak in view of Tarozzi, Adams, and Lin as applied to claim 1 above, and further in view of Toncelli (WO 2007138529 – of record).
Regarding claim 19, Grzeskowiak further discloses wherein the binder is a polymer/binder resin (P0002, 0004, 0022, 0048), but Grzeskowiak does not disclose a polyester resin as the binder.
In the same field of endeavor, manufacturing of artificial stones, Toncelli ‘529 discloses to select a polyester resin free of reactive solvents as a suitable binder (Abstract, claim 1 in pg. 8) and a curing step comprising heating the binder at a temperature below 200 °C (claims 7-8 in pg. 9; Example in pg. 6) for the benefit(s) of avoiding production of styrene vapors while obtaining desirable mechanical and aesthetic characteristics (pg. 2). Toncelli ‘529 further discloses to select discloses siliceous mineral material as a suitable stone/particulate material (lines 2-5 in pg. 6, quartz in the example in pg. 6) the benefit(s) of obtaining desirable mechanical and aesthetic characteristics (pg. 2 and pg. 6).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to further modify the method of Grzeskowiak in view of Toncelli ‘529 by selecting a polyester resin as the binder and heating the binder at a temperature below 200 °C to cure it for the benefit(s) of avoiding production of styrene vapors while obtaining desirable mechanical and aesthetic characteristics as suggested by Toncelli ‘529. See MPEP §§ 2143 IC, 2143 IG and/or 2144 II.
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.
Additional prior art made of record and not relied upon that is considered to be pertinent to
Applicant’s disclosure:
Takeda (US 4895830) discloses that the incorporation of a primer before a printing step of a sublimation ink yield(s) the well-known/predictable result/benefit of improving adhesion and that the selection of the primer is within one of ordinary skill in the art (C1, L10-33).
Horne (US 7108890 – of record) discloses a relevant method of decorating an engineered stone by indirectly inkjet digital printing a pattern with a sublimation ink on an engineered stone (Fig. 1 and accompanying text). Horne can be used in addition or in lieu of Tarozzi.
Wang (US 20160271971 – of record) discloses that the incorporation of a primer before an ink-jet printing step yield(s) a well-known predictable result/benefit of improving adhesion (P0036).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JERZI H MORENO HERNANDEZ whose telephone number is (571)272-0625. The examiner can normally be reached 1:00-10:00 PM PT.
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, Galen Hauth can be reached at 571-270-5516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JERZI H MORENO HERNANDEZ/ Primary Examiner, Art Unit 1743