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.
Response to Amendment
The preliminary amendments filed 12/30/2024 to the abstract, claims, and specification have been reviewed and accepted by the examiner.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 34, 40-42, 44, and 46 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Adams (US-20190099915).
Regarding claim 34, Adams teaches:
A method for manufacturing a decorative element comprising a substrate and a top layer wherein the substrate is made of an engineered stone ([0002]) and wherein the top layer comprises a decorative pattern ([0032] - [0037]), comprising the steps of:
- providing a mixture comprising at least an inorganic filler and a binder ([0017] – [0018]);
- compacting the mixture ([0010] and [0025]);
- curing the binder to obtain the substrate ([0011] and [0028]);
- inkjet printing a first decorative pattern on at least a top surface of the cured substrate ([0028] - [0035] and [0081]);
wherein before said step of inkjet printing, the method comprises the step of providing an adhesion promoter coating on the surface of the substrate ([0041]).
Regarding claim 40, Adams teaches the limitations of claim 34, which claim 40 depends on. Adams further teaches:
wherein the method comprises applying a primer coating above said adhesion promoter coating ([0041] - [0042]).
Regarding claim 41, Adams teaches the limitations of claim 40, which claim 41 depends on. Adams further teaches:
wherein the primer coating is transparent or translucent ([0042]).
Regarding claim 42, Adams teaches the limitations of claim 40, which claim 42 depends on. Adams further teaches:
wherein the primer coating is a radiation curable substance, preferably UV curable substance ([0042]).
Regarding claim 44, Adams teaches the limitations of claim 40, which claim 44 depends on. Adams further teaches:
wherein the primer coating is acrylate based, for example acrylate-based oligomers such as epoxy acrylate, polyester acrylate, urethane acrylate, or acrylate-based monomers ([0041] – [0042]), preferably having functionality from 1 to 6.
Regarding claim 46, Adams teaches the limitations of claim 34, which claim 46 depends on. Adams further teaches:
wherein the method comprises applying a protective coating above said first decorative pattern ([0041] – [0042] and [0095] – [0097]).
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.
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.
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Adams (US-20190099915), as applied to claim 34 above.
Regarding claim 36, Adams teaches the limitations of claim 34, which claim 36 depends on. Adams further teaches:
wherein the adhesion promoter coating is applied in a wet quantity between 20 and 60 g/sqm, preferably 40 g/sqm. While Adams is silent as to the exact wet quantity of the adhesion promoter coating applied, this is a cause effective variable which would be obvious to one of ordinary skill in the art to adjust and find the proper amount when performing the process taught by Adams, in the absence of a showing of criticality or unexpected results.
It is well settled that determination of optimum values of cause effective variables such as these process parameters is within the skill of one practicing in the art. In re Boesch, 205 USPQ 215 (CCPA 1980).
Claims 35, 43, 47-50, and 52-53 are rejected under 35 U.S.C. 103 as being unpatentable over Adams (US-20190099915) as applied to claims 34, 42, and 46 above, respectively, and further in view of Metten (US-20200157012).
Regarding claim 35, Adams teaches the limitations of claim 34, which claim 35 depends on, but does not explicitly teach the adhesion promoter being silane based. However, Metten, in a similar field of endeavor, a method for manufacturing a decorative element on engineered stone with a decorative pattern top layer, teaches:
wherein the adhesion promoter coating comprises a silane-based substance ([0038]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the adhesion promoter of Adams to incorporate the teachings of Metten and have it be silane based. The purpose, as stated by Metten, being to further improve the adhesion of the printing composition to the concrete ([0038]).
Regarding claim 43, Adams teaches the limitations of claim 42, which claim 43 depends on, but does not teach gelling the primer coating. However, Metten, in a similar field of endeavor, a method for manufacturing a decorative element on engineered stone with a decorative pattern top layer, teaches:
wherein the method comprises the step of gelling the primer coating ([0038] – [0039]), preferably using Gallium (Ga) UV lamp.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the primer coating step of Adams to incorporate the teachings of Metten and gel the primer coating. The purpose, as stated by Metten, being that a cover layer D based on a sol-gel coating, is also suitable as a primer ([0038]).
Regarding claim 47, Adams teaches the limitations of claim 46, which claim 47 depends on, but does not explicitly teach the protective coating comprising two coats. However, Metten, in a similar field of endeavor, a method for manufacturing a decorative element on engineered stone with a decorative pattern top layer, teaches:
wherein the protective coating comprises a base coat that is applied immediately on top of the printed pattern and a top coat that is provided above the base coat ([0036]). Metten teaches using at least one cover layer as the protective coating ([0036] – [0037]) therefore it would be obvious to one of ordinary skill in the art using Metten to modify Adams to include a base coat and a top coat provided one on top of the other, in the absence of a showing of unexpected results.
Regarding claim 48, Adams in view of Metten teaches the limitations of claim 47, which claim 48 depends on. Adams further teaches:
wherein the base coat is transparent or translucent ([0042]).
Regarding claim 49, Adams in view of Metten teaches the limitations of claim 47, which claim 49 depends on. Adams further teaches:
wherein the base coat is preferably acrylate based, for example acrylate-based oligomers such as epoxy acrylate, polyester acrylate, urethane acrylate, or acrylate-based monomers ([0041] – [0042]), preferably having functionality from 1 to 6.
Regarding claim 50, Adams in view of Metten teaches the limitations of claim 47, which claim 50 depends on. Adams further teaches:
wherein the base coat comprises scratch resistance additives, for example hard particles ([0042]).
Regarding claim 52, Adams in view of Metten teaches the limitations of claim 47, which claim 52 depends on. Metten further teaches:
wherein the base coat is applied in an amount between 5 and 75 g/sqm, preferably between 5 to 60 g/sqm, for example 6 or 60 g/sqm While Adams is silent as to the exact amount of the protective coat applied, this is a cause effective variable which would be obvious to one of ordinary skill in the art to adjust and find the proper amount when performing the process taught by Adams, in the absence of a showing of criticality or unexpected results.
It is well settled that determination of optimum values of cause effective variables such as these process parameters is within the skill of one practicing in the art. In re Boesch, 205 USPQ 215 (CCPA 1980).
Regarding claim 53, Adams in view of Metten teaches the limitations of claim 47, which claim 53 depends on. Metten further teaches:
wherein the method comprises the step of at least partially, possibly fully, curing the base coat before the step of providing the top coat. While Metten is silent as to whether the first coat of the protective coating is cured before providing the second coat, Metten does provide different options for when to cure the protective coat ([0036] – [0037]), therefore it would be obvious to one of ordinary skill in the art looking at Adams in view of Metten as combined in the rejection of claim 47 above to perform the claim limitations of this claim, as performing the steps of curing and applying the two coats, which can be identical as far as the claimed limitations are concerned, sequentially or simultaneously does not hold any patentable weight in the absence of a showing of criticality.
In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to be not patentably distinguish the processes. Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959).
Claims 37-38 are rejected under 35 U.S.C. 103 as being unpatentable over Adams (US-20190099915) as applied to claim 34 above, and further in view of Marzolin (US-20020182334).
Regarding claim 37, Adams teaches the limitations of claim 34, which claim 37 depends on. Adams further teaches:
wherein the adhesion promoter coating is a water-based substance ([0041]).
Adams does not explicitly teach:
the method further comprises the step of drying the adhesion promoter coating.
However, Marzolin, in a similar field of endeavor, a method for manufacturing an engineered stone with an adhesion promoter on top, teaches:
the method further comprises the step of drying the adhesion promoter coating ([0002], [0004], and [0034]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the adhesion promoter step of Adams to incorporate the teachings of Marzolin and incorporate a step of drying the adhesion promoter coating. The purpose, as stated by Marzolin, being it is preferable to leave an amount of time which is sufficient for the material to dry ([0034]).
Regarding claim 38, Adams in view of Marzolin teaches the limitations of claim 37, which claim 38 depends on. Marzolin further teaches:
wherein the adhesion promoter coating, before drying, comprises a dry to water content between 1:6 and 1:2, for example 1:4 ([0041]).
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Adams (US-20190099915) in view of Marzolin (US-20020182334), as applied to claim 37 above, and further in view of Metten (US-20200157012).
Regarding claim 39, Adams in view of Marzolin teaches the limitations of claim 37, which claim 39 depends on, but does not explicitly teach the drying step being performing using air blowing or electromagnetic radiation. However, Metten, in a similar field of endeavor, a method for manufacturing a decorative element on engineered stone with a decorative pattern top layer, teaches:
wherein said drying step can be performed using air blowing and/or IR radiation ([0039]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the drying step of Adams in view of Marzolin to incorporate the teachings of Metten and have the drying step be performed using electromagnetic radiation. The purpose, as stated by Metten, being that a cover layer D based on a coating that cures under the action of electromagnetic radiation ([0039]).
Claim 45 is rejected under 35 U.S.C. 103 as being unpatentable over Adams (US-20190099915), as applied to claim 40 above, and further in view of Chowdhury (US-20180037514).
Regarding claim 45, Adams teaches the limitations of claim 40, which claim 45 depends on, but does not explicitly teach the primer comprising UV absorbers. However, Chowdhury, in a similar field of endeavor, a method of inkjet printing material, on a cement based substrate, teaches:
wherein the primer coating comprises UV absorbers, for example belonging to the triazine family or benzotriazole family ([0206]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the primer coating of Adams to incorporate the teachings of Chowdhury and have it comprise UV absorbers. The purpose, as stated by Chowdhury, being that it may be used as surface additives to provide good substrate wetting and good anti-crater performance by reduction of surface tension of the coatings. Suitable stabilizers encompass typical UV absorbers, such as oxanilides, triazines, benzotriazoles ([0206]).
Claim 51 is rejected under 35 U.S.C. 103 as being unpatentable over Adams (US-20190099915) in view of Metten (US-20200157012), as applied to claim 47 above, and further in view of Chowdhury (US-20180037514).
Regarding claim 51, Adams in view of Metten teaches the limitations of claim 47, which claim 51 depends on, but does not explicitly teach the base coat comprising UV absorbers. However, Chowdhury, in a similar field of endeavor, a method of inkjet printing material, on a cement based substrate, teaches:
wherein the base coat comprises UV absorbers, for example belonging to the triazine family or benzotriazole family ([0206]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the base coat of Adams in view of Metten to incorporate the teachings of Chowdhury and have it comprise UV absorbers. The purpose, as stated by Chowdhury, being that it may be used as surface additives to provide good substrate wetting and good anti-crater performance by reduction of surface tension of the coatings. Suitable stabilizers encompass typical UV absorbers, such as oxanilides, triazines, benzotriazoles ([0206]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adrien J Bernard whose telephone number is (571)272-1384. The examiner can normally be reached M-R, from 7:30a.m.-4:30p.m..
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, Alison L Hindenlang can be reached at 571 270-7001. 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.
/A.B./Examiner, Art Unit 1741 /JACOB T MINSKEY/Primary Examiner, Art Unit 1748
Prosecution Insights