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 .
Status of the Claims
Claims 1-9, 11-17, and 20-22 are pending and rejected. Claims 18 and 19 are withdrawn. Claims 1, 9, 11, and 17 are amended. Claim 10 is cancelled and claim 22 is newly added.
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 4 and 17 are 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.
Regarding claim 4, the claim has a specific temperature and time for “said drying step”, however, claim 1 has been amended to include two drying steps, one for the dispersed ink and one for drying the primer. Therefore, it is unclear to which drying step claim 4 is referring. For the purposes of examination, the claim is being interpreted as referring to the step of drying the dispersed ink because that is how it was written in the original claims. Appropriate action is required without adding new matter.
Regarding claim 17, the claim recites the limitation "the aggregates formed by granules and/or powders" in line 2. There is insufficient antecedent basis for this limitation in the claim. The claim is dependent on claim 1, however, claim 14 provides antecedent basis for the aggregates, making it unclear whether the claim is intended to be dependent on claim 1 or claim 14. For the purposes of examination, the claim is being interpreted as being dependent on claim 14 so as to provide antecedent basis.
Appropriate action is required without adding new matter.
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 (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.
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.
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 1-7, 9, 11, 14-17, and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Edwards, US 2016/0297224 A1 in view of Fenzi, US 6,676,792 B1 (both references provided on the IDS of 6/21/2024), Adams, US 2020/0262101 A1 (provided on the IDS of 6/21/2024) and Horne, US 2004/0072085 A1.
Regarding claim 1, A method for manufacturing slabs made of stone or stone- like agglomerate material and having decorations and/or chromatic effects (methods for sublimation printing on substrates such as agglomerated stone material, 0007 and 0034, where the process prints an image, 0023, so as to provide a decoration), the method comprising at least the following steps:
applying a dispersed ink containing pigments on said at least one surface (where an ink including a pigment, a dispersant, a surfactant, etc. is applied to the substrate, where the ink includes the dye dispersed in the ink, 0007, 0018, 0035, and 0037, such that the ink will be dispersed);
drying said dispersed ink (where a dryer may be configured to remove water or solvent from a water-based ink formulation or a solvent-based ink formulation prior to curing, for example, a distinct dryer may be located between the printer head 104 and the light source 108, such that the ink is dried, wholly or partially, prior to being exposed to UV radiation, 0022 and Fig. 1);
penetration, by means of diffusion, of the pigments of the dispersed ink into the slab by means of the change in state of the pigments so as to form the decorations and/or the chromatic effects (where a heating element generates heat that causes at least some of the dye in the ink to sublimate and permeate the substrate, 0031, where during the process some of the dye or pigment in the ink sublimes, or is converted into a gas, and permeates/diffuses into the substrate, thereby forming an image, 0037, indicating that the pigment will change states during sublimation to diffuse or permeate into the substrate to provide the decoration/image);
cooling the slab (where the sublimed dye resolidifies within the substrate, 0037, and after heating for sublimation, the slab/substrate is moved to a subsequent station where a solvent is applied to remove residual ink, 0021 and Fig. 1, such that the slab will be cooled at least to some degree during the process of transferring and application of the solvent so as to result in solidified ink);
removing the excess or residual dispersed ink from the at least one surface of the slab (where a solvent is applied to remove residual ink that did not permeate the substrate during the sublimation process, 0021 and Fig. 3, indicating that excess ink will be removed).
They do not teach machining the substrate prior to adding the ink or applying a layer of functional compound on the surface of the slab.
Fenzi teaches a process for decorating sections made of plastic materials, composite materials, and the like, comprising a step of pre-treatment for the preparation of the surface, a possible step of pre-painting, a possible step of pre-heating, a step of decoration by transfer from a strip-like flexible support, a last step of sublimation and fixing (abstract). They teach that the sections include composite materials, such as resins reinforced with carbon and or glass fibers and the like that are provided with decorations in one or more colors (Col. 1, lines 47-56). They teach that the section are submitted to pre-treatment including mechanical polishing and the like (Col. 1, line 60 through Col. 2, line 4). They teach that the possible pre-painting includes priming the surface followed by applying the decoration and sublimating (Col. 2, lines 5-22). They teach that after sublimation, the decorated section may be submitted to a further protection treatment by means of the application of a transparent, possibly fluid paint, and subsequent air, hot air, UV, or IR radiation oven drying (Col. 2, lines 48-53). They teach that the transparent paint provides a decoration-protecting film (Col. 3, lines 1-6 and Col. 4, lines 1-8).
From the teachings of Fenzi, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of Edwards to have prepared the surface of the stone agglomerate by mechanical polishing and to have applied a protective layer to the sublimated decorated surface because Fenzi teaches that it is known to provide mechanical polishing to a composite surface prior to applying a decorative image and that a transparent paint is desirably applied to a decorative surface to protect the underlying decoration such that it will be expected to provide a smooth surface for the application of the ink and a transparent layer to protect the applied decoration. Therefore, in the process of Edwards in view of Fenzi the surface of the slab will be machined by polishing and a layer of a functional compound (protective film-forming compound) will be applied on the surface of the slab.
Fenzi teaches pre-painting the surface with a primer using fluid or powder paints (Col. 2, lines 5-8).
They do not teach applying a primer to engineered stone.
Adams teaches a method for manufacturing an engineered stone by providing a mixture comprising at least a stone or stone like material and a binder; compacting the mixture; curing the binder; and then printing a printed pattern on at least a top surface of the engineered stone (abstract). They teach that sublimation inks can be used in forming the printed pattern (0036-0037). They teach providing the surface to be printed with a primer, for example, an ink adhesion promoter or catalyst, before the step of printing (0041). They teach that the primer can be water based, methacrylic, acrylic, polyurethane, styrene, etc. (0041).
Horne teaches a method for rendering durable, matte-finish images on a stone or masonry substrate comprising providing a stone or masonry substrate, applying a polymer to the surface and curing the polymer thereto, and transferring a sublimable ink image to the cured polymer via sublimation (abstract). They teach that after the polymer is applied, it is cured by any suitable conventional method, including drying (0029). They teach that after the polymer is fully cured, the sublimable image is transferred to the surface (0030).
From the teachings of Fenzi, Adams, and Horne, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have applied a primer to the surface of the slab and to have dried the primer layer because Fenzi teaches that primers can be applied as fluids, Adams teaches that such a layer is desirable as an ink adhesion promoter in engineered stone, and Horne teaches that it is desirable to dry/cure a polymer or ink receptive layer on a substrate surface prior to transferring an image by sublimation such that it will be expected to provide the primer layer for promoting ink adhesion which is then suitable for application of the sublimation ink. Therefore, the step of applying said dispersed ink on said at least one surface is preceded by a step of applying and drying a primer.
Regarding claims 2 and 3, Edwards in view of Fenzi, Adams, and Horne suggest the process of claim 1. Edwards further teaches that during the sublimation process, the pigment within the ink sublimes, or is converted into gas, and permeates/diffuses into the substrate where it re-solidifies (0037).
Therefore, during the step of penetration by means of diffusion, the pigments of the sublimation ink undergo a change in state from solid to gaseous, where the ink is expected to also diffuse and change state .
Regarding claims 4 and 6, Edwards in view of Fenzi, Adams, and Horne suggest the process of claim 1, where Edwards teaches drying the sublimation ink either wholly or partially so as to remove water or solvent from a water-based ink or a solvent-based ink formulation (0022).
Fenzi teaches that sublimation and fixing can be done in an air circulation-, IR- or UV oven or the like (Col. 4, lines 8-25). They teach that providing a further protection treatment by applying a fluid paint and subsequent air, hot air, UV or IR irradiation oven drying after sublimation and fixing (Col. 2, lines 48-53). They teach that the cycle can be completed by the stay of the decorated section in a ventilated air-, UV- or IR radiation oven (Col. 3, lines 34-44). They teach that sections remain in the oven for a time comprised between 1 and 30 minutes a temperatures between 100 and 300°C to perform the complete sublimation of the inks and their complete fixing (Col. 3, lines 34-44).
From the teachings of Edwards and Fenzi, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have optimized the drying time and temperature to be within the claimed ranges by drying in an oven because Edwards teaches that the drying can be partial or complete, where the ink may be solvent or water-based, and Fenzi teaches drying/heating in ovens that can be heated or ventilated, such that the drying time and temperature can be optimized dependent on the water/solvent used in the ink and the desired degree of drying (partial/complete). According to MPEP 2144.05 II A, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have optimized the drying temperature and time to be within the claimed ranges by routine experimentation in the absence of evidence indicating criticality of the ranges.
Regarding claims 5 and 7, Edwards in view of Fenzi, Adams, and Horne suggest the process of claims 1 and 6. Edwards teaches subliming the ink by raising the temperature, e.g., 200°C (0030). Fenzi teaches performing sublimation and fixing at a temperature of between 100 and 300°C for 1 to 30 minutes to obtain transfer of the decoration and/or the pattern and the polymerization of colors (Col. 2, lines 20-23). They teach performing the sublimation process in an oven (Col. 3, lines 34-44). From the teachings of Edwards and Fenzi, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have performed the sublimation or penetration step at a temperature of between 100 and 300°C for 1 to 30 minutes because Fenzi teaches that such conditions are used in sublimation processes with composite substrates and Edwards teaches performing sublimation at a temperature within the range of Fenzi, where the slab is a composite material, i.e. it includes polyester and agglomerate stone material (0034) such that it will be expected to provide a suitable temperature and time range for sublimating the pigment into the surface. Therefore, the time and temperature overlaps the claimed ranges. Therefore, the drying time and temperature overlaps the claimed ranges. According to MPEP 2144.05, “in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Regarding claim 9, Edwards in view of Fenzi, Adams, and Horne suggest the process of claim 1. As noted above, Fenzi suggests performing mechanical polishing (Col. 2, lines 1-4), such that the step of polishing is expected to be done using polishing tools.
Regarding claims 11 and 20, Edwards in view of Fenzi, Adams, and Horne suggest the process of claim 1. Adams further teaches that the primer can be acrylic, methacrylic, polyurethane, water based, solvent based, etc. (0041). They teach applying the primer by spraying, rollers, or any other suitable technique (0041). From this, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have applied a solution or dispersion of organic compounds such as acrylic, methacrylic, polyurethane in a water solution or dispersion because Adams teaches that such materials are suitable for the primer layer, where the primer is applied by rollers or spraying, suggesting that it is in the form of a liquid and because these are conventional liquid application techniques such that it will be expected to provide the polymeric primer in a suitable aqueous solution for application. Therefore, the primer will consist of a solution or dispersion of organic compounds compatible with the process involving direct application of the dispersed ink onto the slab, since it is compatible with sublimation inks and acts as an ink adhesion promoter.
Regarding claim 14, Edwards in view of Fenzi, Adams, and Horne suggest the process of claim 1. Edwards teaches that the substrate is polyester or a polyester-coated material, such as an agglomerated stone material that includes marble, quartz, etc., where agglomerated stone is also referred to as engineered stone (0034).
Adams teaches a method for manufacturing an engineered stone by providing a mixture comprising at least a stone or stone like material and a binder; compacting the mixture; curing the binder; and then printing a printed pattern on at least a top surface of the engineered stone (abstract). They teach that the engineered stone can be manufactured as a slab (0013). They teach that the stone or stone like material can include any kind of stone, sand, siliceous mineral material, for example quartz, silica sand, clay, etc. (0014). They teach that the stone or stone like material is in the form of aggregates, grains, and/or granules (0014). They teach that the mixture is loaded in a mold or frame and compacting is done under vacuum while vibration is applied to the mold or frame during the pressing step (0026). They teach curing the binder after compacting and then performing printing (0029 and 0033).
From the teachings of Adams, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have formed the engineered stone slab using the process of Adams because Edwards teaches using engineered stone substrates and Adams provides a process of making such substrates. Therefore, before the step of machining the surface of the slab, a step of manufacturing the slab will be performed which involves vacuum vibro-compression (pressing under vacuum and vibration) and hardening (curing) of a mix comprising a binding resin (binder) and aggregates, where since the materials are mixed at least some of the granules are expected to form aggregates during the compression.
Regarding claims 15, 16, and 21, Edwards in view of Fenzi, Adams, and Horne suggest the process of claim 14. Adams further teaches that the stone or stone-like material includes granules or powders of quartz (0014). They teach that the aggregates, grains, and/or granules have a particle size distribution between 0.1 and 0.7 mm (0014). Therefore, when forming the slab using the process of Adams, the granules will be formed of quartz and have a size overlapping the claimed ranges.
Regarding claim 17, Edwards in view of Fenzi, Adams, and Horne suggest the process of claim 14 (note the 112(b) rejection above indicating that the claim is interpreted as being dependent on claim 14 so as to provide antecedent basis for the claim limitations). Adams further teaches that a coloring agent can be added to the mixture to provide a basic color of the engineered stone to provide a background for the printed pattern like a white, grey, beige, or brown background (0023). They teach that the coloring agent can also be either an inorganic or organic substance in powder form (0023). They teach that pigment particles are used as a coloring agent in mixture (0006). From this, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have included a white or beige pigment to the mixture so as to provide a white or slightly colored shade pigment to the aggregates because Adams teaches that it is desirable to add a coloring agent such as white or beige to the mixture for providing a background color, where pigments are known to be included for coloring mixtures such that it will be expected to provide a desirably colored background color for the slab material.
Regarding claim 22, Edwards in view of Fenzi, Adams, and Horne suggest the process of claim 1. As noted above, Fenzi provides the suggestion of polishing the slab prior to applying the decorative ink. Fenzi teaches polishing the surface prior to possible pre-painting or priming of the surface (Col. 2, lines 1-22).
Horne also teaches a step of preparing the stone or masonry substrate prior to applying the polymer to the image receiving surface (0026-0027 and Fig. 4). They teach that preparing the surface includes polishing the surface to give rise to a desired finish (0026).
From the teachings of Fenzi and Horne, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have polished the surface of the slab prior to applying the primer because Fenzi and Horne teach polishing the surface prior to applying a polymer or primer such that it will be expected to provide the desired surface for priming.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Edwards in view of Fenzi, Adams, and Horne as applied to claim 1 above, and further in view of Alvarez, US 2020/0002214 A1.
Regarding claim 8, Edwards in view of Fenzi, Adams, and Horne suggest the process of clam 1.
Adams teaches that the method may also include the step of polishing at least partially the surface of the slab including the printed pattern (0043). They teach that the polishing step is conducted in order to remove an amount of material from the surface so that the printed pattern is still visible on the polished surface, for example, to remove less than 2 mm of the thickness of the slab (0043). They teach that the polishing step is performed in such a way to reduce the thickness of the slab in an amount smaller than the penetration depth (0043).
They do not teach the cooling time.
Alvarez teaches a glass/quartz composite structure that comprises quartz grit, quartz powder and glass grit that is formed into a slab for countertops (abstract). They teach that natural mineral components may be added to provide aesthetics of specific natural stones (abstract). They teach providing the mixture into a mold and compacting under vibration and vacuum (0015 and 0033). They teach heating the compacted mixture in an oven to drive the reaction of the resin to bind the aggregate and form a slab which will be polished into a finished product (0016). They teach that the slabs are kept in the oven for two hours to release internal stresses from the polymer reaction so as to minimize bending during cooling and storage and before polishing (0016). They teach that the slabs are stored flat on a metal rack for 24 hours after removal from the oven to keep the slabs flat during cooling before polishing (0016).
From the teachings of Adams and Alvarez, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have cooled the slab and then to have polished the surface of the printed pattern to remove a portion of the surface because Adams teaches that such a polishing step is conventionally performed after applying a print to an engineered stone slab and Alvarez teaches that it is desirable to cool a slab prior to polishing such that it will be expected to desirably polish the surface of the slab. Therefore, a step of removing excess or residual dispersed ink from the at least one surface of the slab will be performed by means of polishing since it will remove material from the surface, which is expected to include excess dispersed ink. As to the time for cooling, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have cooled the slabs for 24 hours because Alvarez teaches that such a cooling time is desirable prior to polishing such that it will be expected to provide a suitable time to completely cool the slab. Alternatively, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have optimized the cooling time to be within the claimed range so as to provide a cooled slab because the time needed to cool the slab will be dependent on the temperature to which it was heated during sublimation, the temperature during the cooling process, where extending the cooling time would provide the benefit of ensuring a fully cooled surface prior to polishing. Therefore, the cooling time will be within the claimed range (24 hours) or optimized to be within the claimed range. According to MPEP 2131.03, “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.” According to MPEP 2144.05 II A, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Edwards in view of Fenzi, Adams, and Horne as applied to claim 1 above, and further in view of Schoneveld, US 2017/0066690 A1.
Regarding claim 12, Edwards in view of Fenzi, Adams, and Horne suggest the process of claim 1.
Adams teaches that the method may also include the step of polishing at least partially the surface of the slab including the printed pattern (0043). They teach that the polishing step is conducted in order to remove an amount of material from the surface so that the printed pattern is still visible on the polished surface, for example, to remove less than 2 mm of the thickness of the slab (0043). They teach that the polishing step is performed in such a way to reduce the thickness of the slab in an amount smaller than the penetration depth (0043).
From the teachings of Adams, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have polished the surface of the printed pattern to remove a portion of the surface because Adams teaches that such a polishing step is conventionally performed after applying a print to an engineered stone slab.
They do not teach removing the excess or residual dispersed ink from the surface by means of brushing using abrasive tools.
Schoneveld teaches depositing a coating mixture on a substrate, vibrating the assembly, curing, and performing mechanical finishing of the surface (abstract). They teach applying the coating to agglomerated stone specimen (0098). They teach that the visible surface of the coating is finished by a mechanical treatment selected from polishing with abrasives, polishing with brushes, or sand blasting and/or by a chemical treatment of acid etching such that a visible surface in which the first layer has been removed from the area with less gravel concentration and with more resin concentration is obtained for obtaining a final product with a very high gravel and very low resin concentration (0047).
From the teachings of Schoneveld, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have polished the surface of the printed pattern using brushes to remove a portion of the surface because Adams teaches that such a polishing step is conventionally performed after applying a print to an engineered stone slab and Schoneveld teaches that polishing using brushes can be done to remove a portion of a surface of an engineered stone slab such that it will be expected to desirably polish the surface of the slab. Therefore, a step of removing excess ore residual dispersed ink from the at least one surface of the slab will be performed by means of brushing suing abrasive tools since it will remove material from the surface, which is expected to include excess dispersed ink.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Edwards in view of Fenzi, Adams, and Horne as applied to claim 1 above, and further in view of Bieniek, US 2021/0387581 A1.
Regarding claim 13, Edwards in view of Fenzi, Adams, and Horne suggest the process of claim 1, wherein the functional compound is suggested to be a protective film-forming compound.
They do not teach that the functional compound is transparent and consists of a silazane solution.
Bieniek teaches a method for producing a decorative part which comprises a visible side with a decorative layer, where a polysilazane-containing composition is applied to the visible side of the decorative layer to form a cover layer which is subsequently cured (abstract). They teach that due to the use of a polysilazane-containing cover layer, excellent scratch and abrasion resistance is achieved and it protects sensitive decorative layers against external influences without impairing the appearance of the decorative layer (0009). They teach that the cover layer has dirt-repellent properties and is easy to clean (0009). They teach that the cover layer has excellent transparency (0048). They teach that the polysilazane-containing composition comprises a solvent (0022), such that it will be a silazane solution.
From the teachings of Bieniek, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used the polysilazane composition to form the protective layer because Bieniek teaches that such a composition provides the benefits of excellent scratch and abrasion resistance, protection of sensitive decorative layers against external influences without impairing the appearance of the decorative layer, dirt-repellent properties, is easy to clean, and excellent transparency such that it will be expected to provide a desirable protection layer for the engineered stone slab. Therefore, the functional compound will be transparent and consist of a silazanes solution.
Response to Arguments
Applicant’s arguments dated 10/28/2025 have been fully considered.
As noted above, the amendments addressed the 112(b) rejection of claim 9 and one of the rejections of claim 17. Further, the amendment raised a new 112(b) rejection for claim 4.
Regarding Applicant’s argument that even the functional compound (considered anticipated by Fenzi) would not have been considered as being applied on a stone or stone-like material (but rather on metal, plastic materials and composite materials, as Fenzi teaches), it is noted that Fenzi provides the suggestion of providing the functional material to protect the surface of the ink, where the functional layer is provided to a composite material. The references of Adams and Horne were relied upon for the suggestion of using a primer for the engineered stone (which is a composite material) because they provide a motivation for applying the primer and the suggestion of drying the primer as required by the claims.
Regarding Applicant’s argument that Edwards is clearly in conflict with applying a primer, disclosing that the ink is deposited directly onto a substrate and without any further component interposed, i.e., without any primer, it is noted that Edwards teaches that the surface may be coated with a polyester material so as to allow the sublimed ink to bind to the substrate (0034 and 0042), which can be considered a primer or type of primer and is alignment with the suggestion of Adams and Horne of applying the primer as an ink adhesion or receptive layer.
Regarding Applicant’s argument that Adams' step of polishing is performed after the step of printing by application of the ink, the process of Edwards was modified by Fenzi to suggest polishing prior to applying the ink, which is in agreement with the process of Horne which also polishes the surface to prepare the stone or masonry substrate (0026 and Fig. 4).
Regarding Applicant’s argument that Horne is not designed to receive an ink-jet printed ink, as disclosed in Edwards, the teachings of Horne are still expected to apply to a sublimation ink deposited by an inkjet process because they indicate that it is known to dry polymer primer layers on a stone or masonry substrate prior to applying a sublimation ink.
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.
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/CHRISTINA D MCCLURE/Examiner, Art Unit 1718 /GORDON BALDWIN/Supervisory Patent Examiner, Art Unit 1718