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 .
Status of Application
Claims 1-17 are pending. Claims 5, 6 and 8-12 are withdrawn. Claims 1-4, 7, and 13-17 are presented for examination.
Election/Restrictions
Newly amended claim 12 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Newly amended claim 12 is directed to a related process. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed are not capable of use together as one requires direct printing on the substrate while the other prints on a decal which is then transferred to a substrate. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants. Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 12 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Arguments
Applicant’s terminal disclaimer has overcome the double patenting rejection.
Applicant's arguments filed 6/4/2026, with respect to the prior art rejections, have been fully considered but they are not persuasive. Applicant argues that there is no teaching or suggestion in Tarozzi of examining a manufactured slab or engineered stone slab to obtain a first set of results which depends on the “appearance” of the surface, using the results to create a masking image and printing the image onto the first engineered stone slab. However, the Examiner disagrees and maintains that the combination of references make obvious the claimed features. Tarozzi teaches the features of creating a masking image and printing a masking image. Furthermore, Boehm teaches examining a slab to obtain a set of results and then using that set to create an optimal masking image that eliminates defects. Therefore, it would have been obvious to apply this observation and creation of a masking image to Tarozzi’s process by examining the manufactured slab and creating the masking image based on the slabs appearance to eliminate defects. Therefore, the combinations of references make obvious the claimed steps.
With respect to amended claim 17, the Examiner notes that the Applicant argues that Boehm doesn’t teach printing to the topmost surface. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, Tarozzi teaches printing to the topmost surface, and the combination makes obvious printing to the topmost surface. Therefore, the rejections of record are maintained as presented below.
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.
1. Claim(s) 1, 3, 4, 7, and 13-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tarozzi (WO 2022/172242) in view of Boehm Systems (DE202019101133, reference is made to the provided translation).
I. Regarding claims 1, 3, 4, 7 and 17, Tarozzi teaches a process for forming an engineered stone slab (abstract) comprising: producing a first engineered stone slab (abstract); creating a masking image (the predefined design D, see Tarozzi at claim 1); and printing the masking image on the top surface of the engineered stone slab (abstract). Tarozzi fails to teach a step of performing an examination of the slab by photography to form first results which are then used to create the masking image.
However, Boehm Systems teaches a process for defect elimination (the predefined criteria) in a stone slab (4th paragraph) comprising: photographing the stone slab with a digital camera to obtain a set of results and reference image (middle of page 2) which includes information about vein placement (top of page 3 and middle of page 3); using the results to create an image which is the same in some respects and different in others to the reference image (middle of page 3); and then printing the image to remove defects (middle of page 3). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Tarozzi’s process by including steps of photographing the engineered stone slab to provide a reference image and detect defects and/or vein placement and then additionally using this data to create the masking image to aid in eliminating any defects in the completed engineered stone. One would have been motivated to make this modification as it would provide an improved product in which any initial defects in Tarozzi’s initial created stone slab could be eliminated during the Tarozzi’s printing process.
II. Regarding claims 13 and 14, Tarozzi in view of Boehm Systems makes obvious all the limitations of claim 1 (see above). Claims 13 and 14 simply recites repetition of the same steps as recited in claim 1 to form a second engineered stone slab that only varies by random manufacturing inconsistences. Tarozzi teaches application of the process steps to make multiple slabs through a manufacturing process (abstract) which will inherently result in slight differences in the end product based on manufacturing inconsistences. Therefore, Tarozzi in view of Boehm Systems make obvious repetition of the steps as claimed in claim 1 to form plural engineered stone slabs that only differ from each other by random manufacturing inconsistencies.
III. Regarding claims 15 and 16, Tarozzi in view of Boehm teach all the limitations of claim 1 (see above), and Tarozzi further teaches producing plural engineered stone slabs (abstract and Figure 2) and printing the same masking image onto the plural engineered stone slabs (page 6, lines 5-10). Tarozzi further teaches the slabs made by a manufacturing process (abstract and Figure 2) which will inherently yield products that only differ by random manufacturing inconsistencies. Therefore, Tarozzi in view of Boehm also make obvious claims 15 and 16.
2. Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tarozzi in view of Boehm as applied to claim 1 above, and further in view of Ren et al. (“State of the Art in Defect Detection Based on Machine Vision”).
Regarding claim 2, Tarozzi in view of Boehm teach all the limitations of claim 1 (see above), including analyzing an image to reduce defects in a finished stone product (see above), but fail to teach generating the first masking image using AI. However, Ren teaches the use of machine learning (AI) for image processing and analysis to detect defects (abstract). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Tarozzi in view of Boehm’s process by using AI to help analyze the image to aid in generating the first masking image. One would have been motivated to make this modification as Ren teaches that the use of AI improves the scope, efficiency, quality and reliability of industrial inspection (Section 5, page 22).
Conclusion
Claims 1-17 are pending.
Claims 5, 6 and 8-12 are withdrawn.
Claims 1-4, 7 and 13-17 are rejected.
THIS ACTION IS MADE FINAL. 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 ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
June 15, 2026Primary Examiner, Art Unit 1717
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