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 .
Priority
This application is a continuation of 19/055,450, filed 02/17/2025, allowed, which is a continuation-in-part of 18/535,852, filed 12/11/2023, now US 12,226,931 B2.
This application is also a continuation-in-part of PCT/US2024/059224, filed 12/09/2024 and published as WO 2025/128491 A1 on 06/19/2025.
Information Disclosure Statement
The Primary Examiner has considered the IDS filed 11/18/2025.
Drawings
The drawings filed 07/31/2025 are acceptable. See MPEP § 608.02(b)(I).
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 2, 6, and 8 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 2
The term “substantially” in claim 2 is a relative term which renders the claim indefinite. The term “substantially” 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 term “substantially” is often used in conjunction with another term (here, “without substantially breaking or deforming”) to describe a particular characteristic of the claimed invention. It is a broad term. Whether it is a definite term depends on whether one of ordinary skill in the art would have meant by “without substantially breaking or deforming.” See MPEP § 2173.05(b)(III)(D). It is not at all clear how much breaking or deforming of the fragments is permitted while still falling within the scope of the claim. Consequently, the metes and bounds of the claim are impossible to determine.
Claim 6
The term “substantially” in claim 6 is a relative term which renders the claim indefinite. The term “substantially” 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 term “substantially” is often used in conjunction with another term (here, “smaller than”) to describe a particular characteristic of the claimed invention. It is a broad term. Whether it is a definite term depends on whether one of ordinary skill in the art would have meant by “substantially smaller than.” See MPEP § 2173.05(b)(III)(D). While it is clear that the length and width of each fragment must be less than the length and width of the slab, the specification provides no guidance on how great this difference must be – or how little this difference may be – to fall within the scope of “substantially smaller than.” For example, do the dimensions of the fragments need to be less than 50%? 25%? How small must they be? Consequently, the metes and bounds of the claim are impossible to determine.
Claim 8
The term “substantially” in claim 8 is a relative term which renders the claim indefinite. The term “substantially” 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 term “substantially” is often used in conjunction with another term (here, “more composite”) to describe a particular characteristic of the claimed invention. It is a broad term. Whether it is a definite term depends on whether one of ordinary skill in the art would have meant by “substantially more composite than any other region.” See MPEP § 2173.05(b)(III)(D). While it is clear that the amount of composite material must in any two given regions must be relatively equal, the specification provides no guidance on how little this difference must be – or how great this difference may be – to fall within the scope of “substantially more composite than any other region.” For example, do the amounts need to be within 5% of on another? 10%? How close must they be? Consequently, the metes and bounds of the claim are impossible to determine.
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”).
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) 1-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0201928 A1 in view of US 9,707,698 B1.
Claim 1
US 928 teaches a process for producing engineered stone slabs [0014] comprising:
depositing a plurality of fragments of composite material (particulate quartz, resin, additives) into a pile on a surface (paper, 311), which is supported by a supporting structure (mold tray) [0103];
depositing colorant in a predefined region onto at least part of sidewalls of at least some of the plurality of fragments of the composite material (in Fig. 3, sprayed color 27, 29 contacts the sidewalls 16a, 18a of cracks 16, 18 which are formed of the composite material 30) [Claim 22]; and
using a press to flatten and stretch the plurality of fragments of composite material into a slab, after depositing the colorant [0112].
US 928 does not specify that the press is a press roller.
Nevertheless, US 698 teaches a process for the production of a marbleized engineered stone slab wherein the composite material is compressed by “roller devices having rollers which hare used to compress combinations of material” [2:58-60].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to utilize a press roller to accomplish the pressing, flattening, and stretching in the method of US 928. One of ordinary skill in the art would have been motivated to do so by the desire and expectation of successfully pressing, flattening, and stretching the colored composite material with the roller because US 698 teaches it is known in the art of manufacturing engineered stone slabs to do so. See MPEP § 2143(I)(A)-(C).
Claim 2
US 928 further teaches, before using the press roller, using rods 12, 14 to form elongate channels in the plurality of fragments deposited on the surface (composite material, 30), wherein elongate channels form as non-linear pattern with a random edge profile that is not smooth, 130a [Fig. 6].
Moreover, as noted above, colorant is deposited in a predefined region onto at least part of sidewalls of at least some of the plurality of fragments of the composite material (in Fig. 3, sprayed color 27, 29 contacts the sidewalls 16a, 18a of cracks 16, 18 which are formed of the composite material 30) [Claim 22].
Claim 3
US 928 does not teach using first and second press rollers.
US 698 teaches an apparatus including two press rollers 8 and 14, but these rollers do not both serve to simultaneously flatten and stretch the plurality of fragments into a slab.
Nevertheless, “[i]t is well settled that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” In re Harza, 274 F.2d 669, 671 (C.C.P.A. 1960). Consequently, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have used one, two, or as many rollers as needed and/or desired to provide the desired degree of pressing, flattening, and stretching.
Claim 4
US 928 teaches pressing before curing of the engineered stone slab [0112]. The Primary Examiner interprets this as a fair teaching that the plurality of fragments are arranged in their predetermined, final, colored form before pressing commences to form the slab.
Claim 5
As noted above, US 928 teaches using rods 12 and 14 to form cracks. It is the Primary Examiner’s position that the formation of the cracks fairly reads on “a predefined pattern on the surface.”
Claim 6
US 928 teaches that the composite material fits within the bounds of the mold plate on the paper, so there is no single fragment that is larger in a length or width dimension than the final slab length and width. Additionally, US 928 teaches an initial slight pressing [0104]. Because the fragments in US 928 are subject to two pressing steps, the Primary Examiner interprets this as a fair teaching that at least some of the initial fragments have a greater height than they do in the final slab, satisfying the limitations of this claim.
Claim 7
Fig. 3 appears to show application of the colorant to the entire height of the sidewalls of the crack, which reads on the claimed application of colorant to the majority of the height of at least some of the plurality of fragments of composite material. Should this not be the case, it would also have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply the colorant in whatever manner results in the desired marbling or veining of the engineered stone slab.
Claim 8
US 928 does not teach the limitations of this claim. Nevertheless, it would have been obvious to start with a generally uniform distribution of particles as less work is requires subsequently to provide a slab of uniform thickness and coloration.
Claim 9
US 928 does not teach that the slab is formed from a continuous length, cut, and then cured. Nevertheless, a continuous process would have been obvious to one of ordinary skill in the art in that it allows for the production of slabs of many different sizes (i.e., the size of the slab is not limited to the initial size as in a batch process). Moreover, cutting before curing would have been further obvious as doing so as a wet, uncured and softer article is easier to cut than a dried, cured, and hardened slab.
Claims 10, 11, and 13-15
US 928 does not limit the dimensions of the finished slab. It is the Primary Examiner’s position that it would have been obvious to one of ordinary skill in the art to form/cut the slab to have any desired dimensions suitable for end use. For example, a 1.5 meter width and a 3 meter length would be suitable for use of the slab as a countertop in a residential kitchen or as a desktop. See [0003].
Claim 12
As noted above in connection with claim 9, it would have been obvious to one of ordinary skill in the art to form the slabs as a continuous process. Consequently, it would have been further obvious to produce as many slabs as necessary for a desired end use or customer order, whether 2 or 20.
Claim 16
It is readily apparent from US 928 that the application of the colorant(s) to the crack(s), followed by pressing, results in the final vein aesthetic in the slab.
Claim 17
US 928 does not teach the claimed variation in largest dimensions. Nevertheless, it is the Primary Examiner’s position that the dimensions of the fragments is a result-effective variable affecting the size and shape of the rock-like “graining” of the imitation “rock” surrounding the “marbleized veins.” Consequently, it would have been obvious to one of ordinary skill in the art to optimize the size of the particles by routine experimentation, absent evidence of criticality. MPEP § 2144.05.
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 copending Application No. 19/055,450 (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
19/055,450
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;
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 a slab, after depositing the colorant.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. NOTE: The reference application has been allowed. This provisional rejection will become non-provisional once the reference application is published.
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;
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 a 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;
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 a 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;
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 a slab, after depositing the colorant.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. In CN 114195479 A, cited in parent 19/055,450, coloring takes place after formation of a base, blank layer is polished and scraped after drying, and before application of a glaze layer thereto. There is no teaching or suggesting of roller-pressing the printed composite material in CN 479.
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duane Smith can be reached at (571) 272-1166. 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
22 December 2025