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 .
Examiner notes
Claims 16-19 and 21-30 are currently pending of which claims 26-30 are withdrawn. Claims 16-19 and 21 have been amended and claim 20 has been cancelled.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16-25 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 16 recites “the body” there is a lack of antecedent basis for this limitation in the claims. It is suggested to recite “the ceramic body.”
Claim 16 further recites “said walls” and it is unclear if “said walls” if referring to the at least one wall, the other walls, or all walls extending from the body.
For sake of further examination “said walls” will be viewed as referring to a single wall or all walls extending from the body.
Claims 17-19 and 21-25 are rejected as being dependent upon indefinite claim 16.
Claim 19 lacks antecedent basis for “the others.”
For sake of further examination, “the others” will be viewed as referring to “the other walls.”
Claim 21 recites “a length of its longer edge...” without setting forth a basis for comparison for what is the longer edge.
For sake of further examination the claims will be viewed as reciting “a length of its longest edge…”
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 16-18 and 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Evangelisti et al. (US 2021/0070095) and further in view of Loebel et al. (US 2019/0003188).
Regarding claim 16, Evangelisti discloses a tile having upper and lower faces (Fig. 1 and 2) having a ceramic body (0044) and a pattern (5) on the upper face (Fig. 1, 0047). The shape and dimensions of the lower face differing from the upper face (Fig. 2).
Evangelisti teaches the ceramic body having walls extending in a vertical direction (Fig. 1 and 2), however does not teach wherein at least one of said walls has an inclination with respect to the horizontal plane, or with respect to the plane of the lower face, that differs from the inclination of the other walls, wherein the at least one wall shows a varying inclination along its longitudinal direction parallel to the plane of the lower face.
Loebel, in the analogous field of decorative panels (0002), teaches panel having panel edges 2, 3 and 4, 5 (Fig. 1), the edges comprising an edge break having an inclination with respect to the horizontal/lower face plane that differs from the inclination of the other walls, the inclination varying along the longitudinal direction parallel to the plane of the lower face (Fig. 2 annotated below).
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A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the covering element of Evangelisti to comprise an edge surface having a varying inclination as taught by Loebel, to fit two panel together concealing irregularities and offer a less blunt top edge which is less sensitive to mechanical shocks (0004).
Regarding claim 17, Evangelisti teaches the lower face has edges in square with each other.
Regarding claim 18, Evangelisti teaches the upper edges are distressed thus not in square with each other (0046).
Regarding claim 21, Evangelisti does not teach any suitable dimensions for the covering element, thus failing to teach the tile having a length of its longest edge below 35 cm.
However, as the present specification is silent to unexpected results, it would have been an obvious modification to one having ordinary skill in the art at the time the invention was made to modify the length of the longest edge of the tile based on routine experimentation, for the purpose of optimizing operation of said tile. Said obvious modifications including, selecting a length required for a given end use including a length of its longest edge being below 35 cm. Such modifications would have been obvious to one of ordinary skill in the art, since such a modification would have involved a mere change in the size (or dimension) of a strips. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2D 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is no patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
It would have been obvious to one of ordinary skill in the art at the time of the invention to set the length including over the range presently claimed to create a tile as required for a given end use.
Regarding claim 22, Evangelisti teaches a coating on the upper surface (0010).
Regarding claim 23, Evangelisti teaches the upper surface having a relief structure comprises recesses and protrusions and along with a pattern (instant coarse and detailed structures) make a more realistic natural surface (0013).
Regarding claim 24, Evangelisti teaches the pattern formed via digital printing (0009) and the relief structure formed by pressing (0056).
Please note, claim 24 includes product by process language with regards to the recitation of “is obtained through”. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claim 25, Evangelisti teaches a set of tiles (0015) wherein at least one tile has and upper and lower face (Fig. 1 and 2) having a ceramic body (0044) and a pattern (5) on the upper face (Fig. 1, 0047). The shape and dimensions of the lower face differing from the upper face (Fig. 2). The lower faces of the tiles having the same shape and dimension (Fig. 9).
Claims 16-19 and 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Evangelisti et al. (US 2021/0070095) and further in view of Martin et al. (US D714,967).
Regarding claims 16 and 19, Evangelisti discloses a tile having upper and lower faces (Fig. 1 and 2) having a ceramic body (0044) and a pattern (5) on the upper face (Fig. 1, 0047). The shape and dimensions of the lower face differing from the upper face (Fig. 2).
Evangelisti teaches the ceramic body having walls extending in a vertical direction (Fig. 1 and 2), however does not teach wherein at least one of said walls has an inclination with respect to the horizontal plane, or with respect to the plane of the lower face, that differs from the inclination of the other walls, wherein the at least one wall shows a varying inclination along its longitudinal direction parallel to the plane of the lower face.
Martin, in the analogous field of decorative tiles, teaches a tile with a quarry pattern (Fig. 2, Claim). The tile panel having panel walls and the walls comprising an inclination with respect to the horizontal/lower face plane that differs from the inclination of the other walls, the inclination varying along the longitudinal direction parallel to the plane of the lower face for each wall (Fig. 3-7).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the covering element of Evangelisti to comprise walls having a varying inclination as taught by Martin, to produce a tile with a quarry pattern.
Regarding claim 17, Evangelisti teaches the lower face has edges in square with each other.
Regarding claim 18, Evangelisti teaches the upper edges are distressed thus not in square with each other (0046).
Regarding claim 21, Evangelisti does not teach any suitable dimensions for the covering element, thus failing to teach the tile having a length of its longest edge below 35 cm.
However, as the present specification is silent to unexpected results, it would have been an obvious modification to one having ordinary skill in the art at the time the invention was made to modify the length of the longest edge of the tile based on routine experimentation, for the purpose of optimizing operation of said tile. Said obvious modifications including, selecting a length required for a given end use including a length of its longest edge being below 35 cm. Such modifications would have been obvious to one of ordinary skill in the art, since such a modification would have involved a mere change in the size (or dimension) of a strips. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2D 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is no patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
It would have been obvious to one of ordinary skill in the art at the time of the invention to set the length including over the range presently claimed to create a tile as required for a given end use.
Regarding claim 22, Evangelisti teaches a coating on the upper surface (0010).
Regarding claim 23, Evangelisti teaches the upper surface having a relief structure comprises recesses and protrusions and along with a pattern (instant coarse and detailed structures) make a more realistic natural surface (0013).
Regarding claim 24, Evangelisti teaches the pattern formed via digital printing (0009) and the relief structure formed by pressing (0056).
Please note, claim 24 includes product by process language with regards to the recitation of “is obtained through”. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claim 25, Evangelisti teaches a set of tiles (0015) wherein at least one tile has and upper and lower face (Fig. 1 and 2) having a ceramic body (0044) and a pattern (5) on the upper face (Fig. 1, 0047). The shape and dimensions of the lower face differing from the upper face (Fig. 2). The lower faces of the tiles having the same shape and dimension (Fig. 9).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Evangelisti in view of Loebel as applied to claim 19 above and further in view of Martin et al. (US D714,967).
Regarding claim 19, Evangelisti in view of Loebel disclose the limitations of claim 16 as discussed above. Modified Evangelisti does not teach the inclination of each wall differing from the other walls.
Martin, in the analogous field of decorative tiles, teaches a tile with a quarry pattern (Fig. 2, Claim). The tile panel having panel walls and the walls comprising an inclination with respect to the horizontal/lower face plane that differs from the inclination of the other walls, the inclination varying along the longitudinal direction parallel to the plane of the lower face for each wall (Fig. 3-7).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the covering element of Evangelisti to comprise walls having a varying inclination as taught by Martin, to produce a tile with a quarry pattern.
Response to Arguments
Applicant’s amendments filed 06/30/2026 have been entered. Accordingly the 25 U.S.C. 112(b) rejections have been withdrawn. However, due to the amendments new 35 U.S.C. 112(b) rejections have been made.
Applicant’s arguments over the combination of Loebel with Evangelisti have been fully considered but they are not persuasive.
Applicant argues that Loebel does not disclose a wall having an inclination that varies along its longitudinal direction parallel to the plane of the lower face.
The examiner respectfully disagrees. As shown in annotated Fig. 2 provided in the updated rejection, Loebel teaches a wall having first and second differing inclinations along the plane of the lower face. Alternatively, a new rejection has been made in view of Martin et al.
Applicant argues that Loebel teaches away from a wall having an inclination that varies along its longitudinal direction parallel to the plane of the lower face.
This argument is not found persuasive for the same reasons as discussed above. See e.g., annotated Fig. 2.
Correspondence
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Wendt (US 6,782,670) and Schrunk (US 2004/0200164) teaching tiles having inclined surfaces.
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 ALICIA WEYDEMEYER whose telephone number is (571)270-1727. The examiner can normally be reached M-Th 9-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781
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