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 .
Response to Amendment
Applicant’s amendment and remarks, filed 05/15/2026, in reply to the non-final Office action (“non-final action”) mailed 12/29/2025, are noted with appreciation.
Support for the changes made in the amendment can be found, intra alia, at [0037], [0109]-[0110], [0112], and [0123] of the originally-filed specification.
Claim(s) Status
Claims 1-17 remain pending.
Response to Arguments
Applicant’s arguments presented in the remarks, in traverse of the rejection(s) set forth in the non-final action have been fully considered.
Claim Rejections – 35 USC § 112
The rejection of claims 2, 6, and 8 under this heading in the non-final action is withdrawn in view of the amendment.
Claim Rejections – 35 USC § 103
The rejection of claims 1-17 under this heading in the non-final action has been reconsidered in view of the amendment and is withdrawn.
The newly ordered steps in claim 1 do not distinguish over Xie ‘928 because the meaning of “slab” in the instant application differs from that in Xie ‘928.
Applicant amended independent claim 1 to require depositing colorant prior to forming the fragments into a “slab,” followed by press-rolling the fragments into a “slab.” While Xie ‘928 does teach forming an initial “slab” before cracking, applying color, and finally pressing and finishing “to reveal the finished, veining patterned slab,” Xie ‘928’s initial slab is not the same as Applicant’s newly-claimed “slab.”
Specifically, Xie ‘928 teaches forming initial “slab” (350) by “slightly pressing” the damp mixture “on the top by a roller or by a flat plate. This slightly compacts the mixture formation into a consistency similar to damp soil” [0104]. In the instant specification, Applicant discloses that the “slab” is the finished, veined product, having been stretched by the press roller. See, e.g., Spec. at [0025]-[0026] and [0032]-[0036]. Because Xie ‘928’s “slab” is only slightly compacted and has not been compacted to the degree that the fragments are stretched, it is not a “slab” within the meaning of the instant invention and its formation is not prohibited by claim 1, as amended.
Neither Xie ‘928 nor Xie ‘698, alone or in combination, teach using a press roller to stretch the plurality of fragments of the composite material.
While Xie ‘698 teaches using a press roller to flatten the composite when forming a marbleized engineered stone slab [2:58-60], there is no teaching, either in Xie ‘928 nor Xie ‘698 that pressing — whether with a roller or other device — should result in stretching the plurality of fragments, as required by claim 1. Applicant discloses that “[t]he degree of stretching or deformation of the fragments (and colorant added thereto) . . . generally controls (or determines) lengths of resulting veins in the compressed material, etc.” Spec. at [0026].
Because the prior art neither teaches nor suggests such stretching and, as is clear from both Xie references, press roller pressure does not inherently cause such stretching, the rejections under this heading are withdrawn.
Double Patenting
The non-statutory double patenting (“NSDP”) rejections set forth under this heading in the prior Office action are maintained.
Note: Co-pending application 19/055,450 has issued as US 12,552,196 B2 and the provisional NSDP rejection at ¶ 39 of the non-final action has become non-provisional per the warning at p. 15 of that action.
Claim Interpretation
In claim 7, the Primary Examiner interprets the phrase “majority of the height” as > 50% of the height. See Majority, Oxford English Dictionary https://www.oed.com/dictionary/majority_n1 (last visited Dec. 22, 2025) (“[t]he greater number or part; a number which is more than half the total number”).
Applicant amended claim 8 to require that the square footage of composite material in any one region of the surface “is about the same” as the square footage of composite material in any other region of the surface. While the language “about the same” does not appear in the instant specification, see MPEP § 1302.01 (no in haec verba requirement for claim terminology), Applicant does disclose: “In general, any region of square foot should not have 50% more material than another square foot region.” Spec. at [0019]. Consequently, the Primary Examiner interprets “about the same” in claim 8 as one region’s having not having more than 50% more material than any other region.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of US 12,552,196 B2 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 is not patentably distinct from reference claim 1 because instant claim 1 is anticipated by reference claim 1. The printing in the reference application involves application of colorant.
Reference Claim
US 12,552,196 B2
Instant Claim
19/287,670
1. A method for producing engineered stone slabs, the method comprising the steps of:
compressing a damp composite material to form compressed composite material;
fragmenting the compressed composite material into a plurality of fragments of the composite material;
depositing at least some of the plurality of fragments onto a surface, which is supported by a supporting structure; and
then using a height limiting device, in a height limiting step, to disrupt the plurality of fragments so a height of the fragments at the highest point from the supporting structure is substantially the same height as the height limiting device from the supporting structure; and
then using a digital printing device, in a first digital printing step, to print an image onto at least part of a top and side walls of at least some of the plurality of fragments; and
then depositing additional damp composite material onto at least some of the plurality of fragments; and
then using a digital printing device, in an additional digital printing step, to print an image onto at least part of at least some of the additional damp composite material; and
then using a press roller to press, flatten and stretch the plurality of fragments into a slab.
1. A method for producing engineered stone slabs, the method comprising the steps of:
depositing a plurality of fragments of composite material into a pile on a surface, which is supported by a supporting structure;
prior to forming the plurality of fragments into a slab, depositing colorant in a predefined region onto at least part of side walls of at least some of the plurality of fragments of the composite material; and
then using a press roller to press, flatten and stretch the plurality of fragments of the composite material into the slab, after depositing the colorant.
The recitation of “depositing . . . then . . . then . . . then . . .then . . . then” establishes a clear order of steps defining that the colorant is applied before press rolling to form a slab. See generally, TALtech Ltd. v. Esquel Apparel, Inc., 279 Fed. Appx. 974, 978 (Fed. Cir. 2008); Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1371 (Fed. Cir. 2003); Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, and 9 of US 12,226,931 B1 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 is not patentably distinct from reference claims 1, 8, and 9 because instant claim 1 is anticipated by reference claims 1, 8, and 9.
Reference Claims
US 12,226,931 B1
Instant Claim
19/287,670
1. A method for producing engineered stone slabs comprising the steps of:
compressing a composite material to form compressed composite material during a first step of compressing;
fragmenting the compressed composite material into a plurality of fragments of the composite material;
depositing at least some of the plurality of fragments into a pile onto a surface, which is supported by a supporting structure, so that at least one of the plurality of fragments is on top of at least one other fragment of the plurality of fragments;
prior to forming the at least some of the plurality of fragments into a slab, depositing colorant in a predefined region onto at least part of side walls of the at least some of the plurality of fragments of the composite material; and
then using a press roller, during a second step of compressing, to press, flatten and stretch the plurality of fragments of the composite material into a slab, after depositing the colorant;
wherein the first step of compressing occurs before the plurality of fragments are formed; and
wherein the second step of compressing occurs after the step of depositing at least some of the plurality of fragments into the pile onto the surface.
8. A method for producing engineered stone slabs comprising:
compressing composite material to form compressed composite material;
fragmenting the compressed composite material into a plurality of fragments of composite material, wherein the plurality of fragments are significantly varied in fragment size;
distributing the plurality of fragments onto a surface, which is supported by a conveyor belt; depositing colorant in a predefined region onto at least part of side walls of at least some of the plurality of fragments of composite material;
accumulating a pile of at least some of the plurality of fragments on the surface in front of a first press roller by adjusting a height of the first press roller above the surface to thereby control a height of the accumulation of the at least some of the plurality of fragments on the surface in front of the first press roller, wherein the height of the first press roller above the surface is controlled to be significantly less than the height of the accumulation of the at least some of the plurality of fragments on the surface in front of the first press roller; and
using the first press roller to press, flatten and stretch the plurality of fragments of composite material and colorant into a slab, wherein the height of the first press roller above the surface affects a degree of horizontal stretching of the plurality of fragments and colorant by the first press roller; and
wherein the degree of horizontal stretching of the plurality of fragments and colorant by the first press roller is significantly greater than a degree of vertical flattening of the plurality of fragments by the first press roller.
9. A method for producing engineered stone slabs comprising:
compressing composite material to form compressed composite material;
fragmenting the compressed composite material into a plurality of fragments of composite material before depositing the plurality of fragments onto a surface, which is supported by a supporting structure;
depositing the plurality of fragments onto the surface in a pile such that the plurality of fragments are distributed on the surface;
depositing colorant in a predefined region onto at least part of side walls of at least some of the plurality of fragments of composite material deposited onto the surface; and
using a press roller to press, flatten and stretch the plurality of fragments of composite material and colorant into a flat slab, while the plurality of fragments and colorant are on the surface;
wherein the pile of the plurality of fragments deposited onto the surface in front of the press roller has a height from the surface which is greater than a height of the flat slab.
1. A method for producing engineered stone slabs, the method comprising the steps of:
depositing a plurality of fragments of composite material into a pile on a surface, which is supported by a supporting structure;
prior to forming the plurality of fragments into a slab, depositing colorant in a predefined region onto at least part of side walls of at least some of the plurality of fragments of the composite material; and
then using a press roller to press, flatten and stretch the plurality of fragments of the composite material into the slab, after depositing the colorant.
1. A method for producing engineered stone slabs, the method comprising the steps of:
depositing a plurality of fragments of composite material into a pile on a surface, which is supported by a supporting structure;
prior to forming the plurality of fragments into a slab, depositing colorant in a predefined region onto at least part of side walls of at least some of the plurality of fragments of the composite material; and
then using a press roller to press, flatten and stretch the plurality of fragments of the composite material into the slab, after depositing the colorant.
1. A method for producing engineered stone slabs, the method comprising the steps of:
depositing a plurality of fragments of composite material into a pile on a surface, which is supported by a supporting structure;
prior to forming the plurality of fragments into a slab, depositing colorant in a predefined region onto at least part of side walls of at least some of the plurality of fragments of the composite material; and
then using a press roller to press, flatten and stretch the plurality of fragments of the composite material into the slab, after depositing the colorant.
Allowable Subject Matter
Claim 2-7 and 10-17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM P FLETCHER III whose telephone number is (571)272-1419. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM.
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, Curtis Mayes can be reached at (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM PHILLIP FLETCHER III
Primary Examiner
Art Unit 1759
/WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759
2 June 2026
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