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 .
Election/Restrictions
Applicant’s election of Species A4 and B5 (i.e., claim(s) 1-3, 9-10, 12-15, and 17-20) without traverse in the reply filed on 06/26/2026 is acknowledged. Applicant’s statement that claims 1-3 and 5-20 read on the elected species is not correct. Claims 4-6 and 11 do not read on elected Species A4 (See claims 4-6 and 11 and pg. 2 of CTRS dated 04/29/2026). Claims 7-8 and 16 do not read on elected Species A5 because none of these claims are limited to a sublimation ink (See claims 7-8 and 16). Applicant’s statement that sublimation inks are known in the art to be either water or solvent based and are generally organic inks is irrelevant to the election because none of the claims are limited to sublimation inks. In other words, Applicant’s statement is not commensurate with the scope of the claims. Examiner further notes that the type of ink has been used during the prosecution of parent applications to overcome prior art rejections. Accordingly, claims 4-8, 11, and 16 is/are withdrawn as being drawn to the nonelected species and claims 1-3, 9-10, 12-15, and 17-20 is/are examined herein.
Claim Objections
Claim(s) 13 is/are objected to because of the following informalities:
Claim 13, “after curing the coloring agent” should be changed to --after curing, the coloring agent--.
Appropriate correction is required.
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.
Claim(s) 1-3, 9-10, 12-15, and 17-20 is/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.
Claim 1 recites the limitation “stone like material” which is indefinite. The term “stone like” is a relative term which renders the limitation indefinite. The term “stone like” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The description of the term in [0015] and [0074] of Applicant’s published application is not helpful in determining the scope of the term as it appears to encompass any material. The description fails to provide a standard for ascertaining when a material is or is not stone-like. Is the “stone like” referring to a similar appearance to stone or for being in a particulate form? The limitation has been examined below as if it read --particulate material--.
Claim 1 recites the limitation “printing a pattern on at least a top surface of the engineered stone” which is indefinite. It is unclear which of the claimed step yields the engineered stone. The limitation has been examined below as if the engineered stone is formed after the curing step in view of Applicant’s disclosure.
Claim(s) 2-3, 9-10, 12-15, and 17-20 is/are rejected as being dependent from claim 1 and therefor including all the limitation thereof.
Claim 13 recites the limitation “wherein after curing the coloring agent is preferably present in a thickness of the compacted engineered stone of at least 0.5 mm starting from the top surface, more preferably greater than 1 mm, for example greater than 2 mm” which is indefinite. The phrases “preferably”, “more preferably” and “for example” render the claim indefinite because it is unclear whether the limitations following the phrases are part of the claimed invention. See MPEP § 2173.05(d). Additionally, since the claim recites the broad range “at least 0.5 mm” and the narrower ranges “greater than 1 mm” and “greater than 2 mm” which is/are narrower statement(s) of the broad range, the claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05 (c). Last but not least, there is not sufficient antecedent basis for “the compacted engineered stone” in the claim(s). The limitation has examined below as if it read --wherein the coloring agent is present in a thickness of at least 0.5 mm of the engineered stone starting from the top surface of the engineered stone--.
Claim 14 recites the limitation “further comprising a polishing step after curing, and wherein after polishing of the top surface of the engineered stone, the printed pattern is still visible” which is indefinite. The language makes it difficult to ascertain the subject matter for which protection is sought. The orders of steps is unclear/undefined. The polishing step needs to be performed after the printing step. Is the polishing of the top surface of the engineered stone and polishing step related? The limitation has examined below as if it read --further comprising polishing the top surface of the engineered stone after the printing step, and wherein after the polishing of the top surface of the engineered stone, the printed pattern is still visible--.
Claim 15 recites the limitation “a top surface of the engineered stone” which is indefinite. It is unclear if the top surface of the engineered stone of claims 1 and 15 are same or different top surfaces. ? The limitation has examined below as if it read --the top surface of the engineered stone--.
Claim 17 recites the limitation “the printed pattern is applied in a fixed relationship to a predetermined point” which is indefinite. One of ordinary skill in the art would not be reasonably apprised of the scope of the invention because it leaves the reader in doubt as to the meaning of the technical feature to which it refers. A predetermined point of what element/structure? Since the “predetermined point” is undefined, the fixed relationship between the claimed printed pattern and the “predetermined point” is also undefined/unclear. See MPEP 2173.05 (b) (IL). The limitation has been examined below as if it read --the printed pattern is applied at a fixed distance from a predetermined point/edge of the cured engineered stone-- in view of [0038] of Applicant’s published application.
Claim 18 recites the limitation “matching the printed pattern and the basic décor together to form a single image or decoration that continues from one surface to a different surface” which is indefinite. It is unclear how the printed pattern and the basic décor together form a single image. How is the image taken? It is unclear to which surfaces of the engineered stone is applicant referring because the claims fail to recite the steps for providing the printed pattern and/or the basic décor to other surfaces of the engineered stone other than the top surface (see claim 1). As such, the limitation has been examined below as if it read --matching the printed pattern to the basic décor to form a single decoration on the top surface--.
Claim 20 recites the limitation “the stone or stone like material comprises siliceous mineral material, quartz, silica sand, clay, feldspar cristobalite granite, or talc” which is indefinite. Since the claim recites the broad limitation “siliceous mineral material” and the narrower limitations “quartz, silica sand, clay, feldspar cristobalite granite” which is/are narrower statement(s) of the broad range, the claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05 (c). Furthermore, the recitation “feldspar cristobalite granite” is also indefinite. Is applicant claiming these materials in the alternative or as a mixture? The limitation has been examined below as if it read --the stone or particulate material comprises siliceous mineral material--.
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.
Claim(s) 1-3, 9-10, 12-15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Grzeskowiak (US 20160221384) in view of Bollstrom (US 20190225849) and/or Scardovi (US 20190009430).
Regarding claims 1-3, 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).
Grzeskowiak differs from the claimed invention in that Grzeskowiak fails to disclose a step of printing a pattern on at least a top surface of the engineered stone.
In the same field of endeavor, decoration of engineered stones, Bollstrom discloses the technique of incorporating an inkjet digital printing step to print a pattern/logo onto a top surface of an engineered stone already having a basic décor for the benefit(s) of providing an additional durable printed pattern/decoration with high resolution such that the basic décor and the printed pattern/logo are both visible on at least the top surface of the engineered stone (P0143 and Fig. 2). Thus, the addition of printed patterns to basic decors such that both are visible is known and desirable in the art.
In the same field of endeavor, manufacturing of artificial stones (P0003), Scardovi discloses the technique of incorporating an inkjet digital printing step to print a graphic decoration (printed pattern) onto a top surface of an engineered stone slab already having a basic décor (chromatic/veined effect) such that the basic décor and the printed pattern are coordinated and are both visible on at least the top surface of the artificial stone for the benefits of making the finished artificial stone more visually similar to a natural product (P0037-0038, 0042, and Figs. 1-9). Thus, the addition of printed patterns to basic decors such that both are visible is known and desirable in the art.
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 Bollstrom and/or Scardovi by including an inkjet digital printing step to print a pattern on at least the top surface of the engineered stone such that the basic décor and the printed pattern are both visible on at least the top surface of the engineered stone for yielding the predictable benefit(s) of providing to top surface of the engineered stone with an additional/desirable durable printed pattern with high resolution and/or making the engineered stone more visually similar to a natural product via the additional printed pattern as suggested by Bollstrom and Scardovi. See MPEP §§ 2143 I C, 2143 I G, and/or 2144 II.
Regarding claim 9, Grzeskowiak further discloses adding a coloring agent to the mixture to provide a basic color (P0005, 0008, 0011, Figs. 1 and 6).
Regarding claim 10, Grzeskowiak further discloses wherein the basic décor is a veined effect imitating a natural stone (P0011, 0046, Figs. 1 and 6).
Regarding claim 12, Grzeskowiak further discloses wherein the coloring agent penetrates through a surface of the engineered stone (P0011, 0023, Figs. 1 and 6).
Regarding claim 13, Grzeskowiak further discloses wherein the coloring agent is present in a thickness of at least 0.5 mm of the engineered stone starting from the top surface of the engineered stone (P0011, 0023, 0025, Figs. 1 and 6).
Regarding claim 14, since Grzeskowiak further discloses polishing the top surface of the engineered stone after curing (P0050, Fig. 7), Bollstrom and/or Scardovi disclose(s) that the printed pattern needs to be visible (as applied above), and Applicant’s Admitted Prior Art discloses that it is well-known and desirable to include a polishing step in in the art as a finishing step ([0005] of applicant’s published application), 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 Bollstrom and/or Scardovi by polishing the top surface of the engineered stone after the curing and printing steps, and wherein after the polishing of the top surface of the engineered stone, the printed pattern is still visible for yielding the predictable benefit(s) of obtaining a polished/finished top surface of the engineered stone with the printed pattern visible.
Regarding claim 15, Grzeskowiak further discloses polishing the top surface of the engineered stone after curing (P0050, Fig. 7). Applicant’s Admitted Prior Art discloses that it is well-known and desirable to include a polishing step after curing in in the art ([0005] of applicant’s published application).
Regarding claim 17, Bollstrom further shows/suggests wherein the printed pattern is applied in a fixed relationship to a predetermined point/edge of the cured engineered stone (Figs. 1-2). Scardovi further shows/suggests wherein the printed pattern is applied in a fixed relationship to a predetermined point/edge of the cured engineered stone (Figs. 2-9).
Regarding claim 18, Bollstrom further shows/suggests matching the printed pattern to the basic décor to form a single decoration on the top surface (Figs. 1-2). Scardovi further shows/suggests matching the printed pattern to the basic décor to form a single decoration on the top surface (Figs. 2-9).
Regarding claim 19, Scardovi further discloses/shows wherein the printed pattern is a veined effect imitating a natural stone (P0010, Figs. 2-9).
Regarding claim 20, Grzeskowiak further discloses wherein the stone or particulate material comprises a siliceous mineral material such as quartz (quartz: P0022, 0024).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 11565438. Although the claims at issue are not identical, they are not patentably distinct from each other because they are coextensive in scope (i.e., the claim of the reference patent explicitly/implicitly discloses all the claimed limitations of at least the instant claims 1-3).
Claims 1-3 and 9-10 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. US 11628593. Although the claims at issue are not identical, they are not patentably distinct from each other because they are coextensive in scope (i.e., the claims of the reference patent explicitly/implicitly disclose all the claimed limitations of at least the instant claims 1-3 and 9-10).
Claims 1-3 and 10 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. US 11865737. Although the claims at issue are not identical, they are not patentably distinct from each other because they are coextensive in scope (i.e., the claims of the reference patent explicitly/implicitly disclose all the claimed limitations of at least the instant claims 1-3 and 10).
Claims 1-3 and 10 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. US 12384072. Although the claims at issue are not identical, they are not patentably distinct from each other because they are coextensive in scope (i.e., the claims of the reference patent explicitly/implicitly disclose all the claimed limitations of at least the instant claims 1-3 and 10).
Conclusion
Additional prior art made of record and not relied upon that is considered to be pertinent to Applicant’s disclosure:
Horne (US 7108890) discloses a step of printing a pattern on at least a top surface of an engineered stone, wherein the printing step comprises inkjet digital printing a pattern with a sublimation ink (Fig. 1 and accompanying text).
Lin (CN 102765287 B with English machine translation – FOR of record) discloses a step of printing a pattern on at least a top surface of an engineered stone (Abstract and all pages).
Toncelli (WO 2016113652 A1 – FOR of record in parent application) teaches a method for manufacturing an engineered stone (slabs consisting of artificial agglomerate: Pg. 1, L5-7) comprising the steps of:
providing a mixture comprising at least a stone or particulate material and a binder (basic/starting mix: Pg. 1, L9-12; Pg. 4, L24-29);
adding a coloring agent to the mixture in such a manner as to form a basic décor (Pg. 4, L30-32; Pg. 6, L25-Pg. 7, L3; Pg. 11, L11-15; veining/color effect);
compacting the mixture (Pg. 3, L11; Pg. 10 L26-29); and
curing the binder to form an engineered stone (Pg. 4, L24-29; Pg. 10, L26-29; pg. 11, L8-9).
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.
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JERZI H. MORENO HERNANDEZ
Primary Examiner
Art Unit 1743
/JERZI H MORENO HERNANDEZ/Primary Examiner, Art Unit 1743
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