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 CON of 19/055,450, filed 02/17/2025, now US 12,552,196 B2; which is a CIP of PCT/US2024/059224, filed 12/09/2024 and published as WO 2025/128491 A1 on 06/19/2025; which is a CIP of 18/535,852, filed 12/11/2023, now US 12,226,931 B2.
Election/Restrictions
Applicant’s election without traverse of claims 1-15 in the reply filed on 06/16/2026 is acknowledged.
Claim(s) Status
Claims 1-23 are pending as filed 02/06/2026.
Claims 16-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/16/2026.
Information Disclosure Statement
The Primary Examiner has considered the IDS filed 02/06/2026.
Drawings
The drawings filed 02/06/2026 are acceptable. See MPEP § 608.02(b)(I).
Specification
The lengthy specification (47 pages) has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Interpretation
Claims 1 and 8 recite “substantially the same height.” The term “substantially” is a broad term, though not necessarily indefinite. In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960). It is the Primary Examiner’s position that here, the term “substantially” is used as a modifier to imply “approximate” rather than “perfect;” it does not function as a relative term (i.e., a term of degree) because it does not involve comparison to a baseline. See Anchor Wall Systems, Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003). Consequently, it is the Primary Examiner’s position that the phrase “substantially the same height” in claims 1 and 8 is equivalent to “about the same height” and is definite.
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, 2, 10, and 11 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No. 12,552,196 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 2, 10, and 11 of the examined application is anticipated by reference claims 1 and 8. See MPEP § 804(II)(B). In the following table, the Primary Examiner construes the claims per MPEP § 804(II)(B)(1) so as to clearly demonstrate that reference claims 1 and 8 anticipate instantly pending claims 1,2, 10 and 11, with bolded and bolded & italicized limitations corresponding to one-another:
US 12,552,196 B2
(reference claims)
19/532,748
(instant claims)
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 composited 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 sidewalls 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 damp composite material 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 to print an image onto at least part of a top and side walls of at least some of the plurality of fragments.
2. The method of claim 1, further comprising, after using the digital printing device to print the image onto at least part of the top and side walls of at least some of the plurality of fragments, using a press roller to press, flatten and stretch the plurality of fragments into a slab.
8. A method for producing engineered stone slabs, the method comprising:
depositing fragments of composite material onto a surface;
flattening at least some of the fragments onto the surface, using a height limiting device, so that a height of the flattened fragment(s) relative to the surface is substantially the same as a height of the height limiting device relative to the surface; and then
printing a first image onto at least part of the fragments on the surface1; and then
depositing additional composite material onto at least some of the fragments and the image printed onto at least part of the fragments; and then
printing a second image onto at least part of the additional composite material on the surface; and then
using a press roller to press, flatten and stretch the fragments of composite material and the additional composite material into a slab.
10. A method for producing engineered stone slabs, the method comprising:
depositing fragments of composite material onto a surface;
flattening at least some of the fragments on the surface, using a height limiting device, so that a height of the flattened fragment(s) relative to the surface is substantially the same as a height of the height limiting device relative to the surface; and then
using a digital printing device to print at least one image onto at least part of a top and side walls of at least some of the fragments.
11. The method of claim 10, further comprising, after using the digital printing device to print the at least one image onto at least part of the top and side walls of at least some of the fragments, using a press roller to press, flatten and stretch the fragments into a slab.
Allowable Subject Matter
Claims 3-9 and 12-15 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.
The following is a statement of reasons for the indication of allowable subject matter:
Xie (US 9,707,698 B1) teaches a process for the manufacture of engineered stone in which several layers of damp composite material are formed on a conveyor, subsequently compressed, fragmented, compressed again, and finally fragmented. Fig. 1. The composite material can be colored. 4:36-42. This reference also teaches height-limiting gates (4c, 18, 24). This reference does not teach, after passing through a height limiting device, digitally printing (order of steps implied by language "and then;” see Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001)). In fact, this reference doesn't teach digital printing at all. Moreover, this reference also fails to teach using a press roller to press, flatten and stretch the plurality of fragments into a slab.
Xie (US 2019/0201928 A1) teaches a process for digitally printing color into cracks of a soft, damp, slightly pressed slab, by generating cracks in the slab and printing color therein. Abstract. The final product is vacuum-pressed, not roller pressed. [0076]. More- over, this reference fails to teach or suggest the presence of a height limiting device or first and second printings on either side of a second material deposition step.
One of ordinary skill in the art would not have been motivated to combine Xie '698 with Xie '928 because the press rollers in Xie '698 precede fragmenting and there is noth- ing in Xie '698 or Xie '928 suggesting that fragmenting, post printing, would successfully result in any pattern resembling natural stone.
Finally, as to CN 114195479 A, cited in the written opinion of related PCT/US2024/059224, printing takes place after formation of the base, blank layer is pol- ished and scraped after drying, and before application of a glaze layer thereto. There is no teaching or suggestion of fragmenting or roller-pressing the printed composited ma- terial.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2019/0099915 A1, US 2020/0262101 A1, US 2023/0139870 A1, and US 2023/0405868 A1 teach methods for manufacturing an engineered stone comprising: providing a mixture of stone or stone-like material and a binder (i.e., a composite); compacting the mixture; curing the binder. The methods further include digitally printing a printed pattern on at least the top surface of the engineered stone either before or after curing. Compacting occurs in a compacting station that uses a process with vibration and vacuum during compaction. The press reads on the claimed “height limiting device” since it compacts (i.e., reduces the height of) the composite mixture such that the highest point of the composite mixture from the surface of the supporting structure is at most the height at which the press plate stopped. These reference differ from the instant invention because only in the case of digitally printing before compaction does the ink permeate the top surface of the composite mixture to reach at least part of a top and sidewalls of at least some of the plurality of fragments. As noted above, the instant claims require height adjustment first, followed by digital printing.
WO 2007/138529 A1, WO 2009/010406 A1, WO 2016/113652 A1, and WO 2019/070621 A1 are representative of the state of the art.
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
6 July 2026
1 In US 196, “printing . . . a first image onto at least part of the fragments of the surface” includes “using a digital printing device to print an image onto at least part of a top and sidewalls of at least some of the plurality of fragments”. See, e.g., claim 1. “The portion of the specification of the reference that describes subject matter that falls within the scope of a reference claim may be relied upon to properly construe the scope of that claim.” MPEP § 804(II)(B)(1).
Prosecution Insights