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 .
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1 – 5, 8 – 12, 20 - 21, and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over US5827398 (US’398), further in view of JP2009242994(JP’994).
Regarding claims 1 – 5, 20- 21, and 23, US’398 discloses providing a PCC slurry. The preferred slurry is an unsized slurry of PCC (typically about 10 to 70%, preferably 10-40%, by weight PCC) and cationic polymer which can be a small amount (typically about 0.01 to 0.3%) of a synthetic cationic polymer which has a high charge density (typically above about 4 meq/g) and low intrinsic viscosity (typically below about 3 dl/g) but can be a larger amount (typically up to about 1%) of a cationic starch (col. 3, lines 14-23). The PCC slurry has a cationising amount of a cationic polymer. The amount that is used must be sufficient to render the PCC in the slurry sufficiently cationic to achieve significantly improved retention in the process compared to the retention obtained if the same process is conducted in the absence of the cationic polymer. The amount which is selected is usually the amount which gives optimum retention. A suitable amount can be found by routine experimentation in that Britt Jar or other routine laboratory tests can be conducted at varying levels of addition so as to determine which is the optimum (col.5, lines 48-59). The cationic polymer can be mixed by batch or in-line addition into the PCC as it is being pumped towards the point where it is added to the cellulosic suspension, or it can be mixed into the PCC in a storage vessel. Sufficient mixing must be applied to distribute the polymer substantially uniformly over the PCC before addition to the cellulosic suspension. The cationic polymer can be provided as an aqueous solution which is mixed with the filler, or a powdered or reverse phase form of the cationic polymer may be used. The amount is generally in the range about 0.005% to 2%, dry weight polymer based on the dry weight of PCC in the slurry. The cationic polymer can be a cationic naturally-occurring polymer, such as cationic starch. With a modified natural polymer such as this, the amount is usually at least 0.05% and is usually in the range 0.1 to 1%, often around 0.3 to 0.7%. Routine testing of a range of cationic starches will allow selection of grades (degree of substitution and origin of starch) which are suitable. Potato or other relatively low molecular weight starches are preferred. Low DS starches are preferred (col. 5, line 48-col.8, line 4).
Although US’398 is silent that the PCC is cationic, it does teach that the precipitated calcium carbonate which is used in the invention can be made by any of the known techniques for the manufacture of PCC. Such techniques usually involve passing carbon dioxide through an aqueous solution of slaked lime, calcium oxide, to form an aqueous slurry of precipitated calcium carbonate (col. 3, lines 35-37). JP’994 discloses in the production method of PCC the surface charge of light calcium carbonate exhibits weak cationicity ([0008]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to combine to use the weak cationicity PCC in the process of US’398 teaches that the precipitated calcium can be made by any of the known techniques for the manufacture of PCC and JP’994 discloses in the production method of PCC the surface charge of light calcium carbonate exhibits weak cationicity ([0008]).
The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988); In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992); see also In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000) The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" ranges, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
The Examiner respectfully submits that although the prior art combination does not disclose the claimed properties (stable dispersion, stable for over 6 weeks, z potential, pH et al), the claimed properties are deemed to naturally flow from the structure in the prior art combination, since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 8, US’398 discloses that the crystal structure of the slurry is usually scalenohedral or rhombohedral but other precipitated calcium carbonates suitable for paper filling grades may be used (col.3, lines 47-50). "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted)
Regarding claims 9 - 11, US’398 discloses that the precipitated calcium carbonate which is used in the invention can be made by any of the known techniques for the manufacture of PCC. Such techniques usually involve passing carbon dioxide through an aqueous solution of slaked lime, calcium oxide, to form an aqueous slurry of precipitated calcium carbonate. It is possible to recover PCC from a slurry as powder and then reslurry it prior to use in paper making (col. 3, lines 35-63). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 12, US’398 discloses that the cationic polymer can be a cationic naturally-occurring polymer, such as cationic starch. With a modified natural polymer such as this, the amount is usually at least 0.05% and is usually in the range 0.1 to 1%, often around 0.3 to 0.7%. Low DS starches are preferred (col. 5, line 63-col. 6, line 4).
Claims 7, 12 – 15 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5,827,398 (US’398) and JP2009242994 (JP’994) as applied to claim 1 above, further in view of U. S. Patent No. 4,892,590 (US’590).
US’398 and JP’994 discloses the process set forth above. But it is silent about the specific starch and/or the surface area as applicant set forth in the claims.
US’590 discloses that starches are used in the papermaking process to improve dry strength of the paper. A roll mill is used in dispersion. Modified starches especially those having tertiary amino or quaternary ammonium groups and which are cationic in nature are used. The cationic starch can be derived from any of the commonly available sources of starch producing materials, such as potatoes, corn, wheat and rice. A potato derived starch is favored, especially one in which the degree of substitution is between 0.10% and 0.50%. The preferred cationic potato starch is one made cationic by reaction with 3-chloro-2-hydroxypropyl trimethylammonium chloride to a degree of substitution of from 0.20% to 0.40%. The composition comprising a highly dispersible, high specific surface area such as 50m2/g precipitated calcium carbonate (colloidal PCC) and a cationic starch, especially a cationic potato starch, improves filler retention, opacity and strength during papermaking (col. 3, lines 20-44; abstract; claims 1-2).
Thus, it would have been obvious to one of ordinary skill in the art at the time of invention by applicants to use the specific starch and the PCC with the claimed surface area set forth in the claims, motivated by the fact that US’590, also drawn to PCC used in paper making, discloses that US’ 590 discloses that starches are used in the papermaking process to improve dry strength of the paper. A roll mill is used in dispersion. Modified starches especially those having tertiary amino or quaternary ammonium groups and which are cationic in nature are used (col. 3, lines 20-44; abstract; claims 1-2).
Claim 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5,827,398 (US’398) and JP2009242994 (JP’994) as applied to claim 1 above, further in view of JP JP2001072413 (JP’413).
US’398 discloses that the precipitated calcium carbonate can be made by any of the known techniques for the manufacture of PCC (col.3, lines 35-45). It is possible to recover PCC from a slurry as powder and then reslurry it prior to use in paper making (col. 3, lines 60-63). But it is silent about the cationic calcium carbonate comprises dry cationic precipitated calcium carbonate obtained by filtering and drying the dilute aqueous slurry resulting from the production of precipitated calcium carbonate.
JP’413 discloses a light calcium carbonate dispersed with a cationic dispersant and the PCC is made by a known method of filtering and drying the dilute aqueous slurry resulting from the production of precipitated calcium carbonate ([0018] and [0021]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to apply JP’413 process in the process of the combined teaching of US’398 and JP’994 because US’398 teaches that the precipitated calcium carbonate which is used in the invention can be made by any of the known techniques for the manufacture of PCC and JP’413 discloses a light calcium carbonate dispersed with a cationic dispersant and the PCC is made by a known method of filtering and drying the dilute aqueous slurry resulting from the production of precipitated calcium carbonate ([0018] and [0021]).
Response to Arguments
Applicant's arguments filed 04/13/20260 have been fully considered but they are not persuasive.
The applicant argues that Depasquale (US’398) use anionic PCC.
The Examine disagrees. The Examiner respectfully submits that US’398 discloses that “Before mixing the PCC slurry with the suspension it is necessary to mix into the PCC slurry a cationising amount of a cationic polymer. The amount that is used must be sufficient to render the PCC in the slurry sufficiently cationic to achieve significantly improved retention in the process compared to the retention obtained if the same process is conducted in the absence of the cationic polymer”. See col. 5, lines 48-54.Thus, relatively weak cantionic PCC, which is not sufficiently cationic, can be used with a cationisig amount of a cationic polymer.
The applicant argues that Applicant first notes JP'994, in the same vein as Depasquale, is directed to the production of calcium carbonate filled paper. Moreover, it is known to those skilled in the art that light calcium carbonate is not cationic in all conditions, as the cationicity is highly dependent on pH.
The Examiner respectfully submits that US’398 discloses that “ the precipitated calcium carbonate which is used in the invention can be made by any of the known techniques for the manufacture of PCC”. See col. 3, lines 35-37. JP’994 discloses in the production method of PCC the surface charge of light calcium carbonate exhibits weak cationicity ([0008]). Thus, US’398 implies that weak cationicity PCC can be used in US’398 process.
The Applicant argues the unexpected result of the instant application (the rule 132 Declaration}.
The Examiner respectfully submits that the applicant must compare the instant application with the closest art. Evidence of unexpected results must be commensurate in scope with the subject matter claimed. In re Linder 173 USPQ 356. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside (i.e. as well as the upper and lower limits) the claimed range to show the criticality of the claimed range. In re Hill 284 F.2d 955, 128 USPQ 197 (CCPA 1960). Further more any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merk & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The applicant fails to compare the PCC slurry of PCC (typically about 10 to 70%, preferably 10-40%, by weight PCC) and cationic polymer which can be a small amount (typically about 0.01 to 0.3%) with the instant application’s claimed slurry. See col. 3, lines 14-22.
The applicant argues that the results set forth in the Rule 132 Declaration were not submitted to show criticality of the claimed 30-75% range, but instead were submitted to show that Depasquale alone does not provide the unexpected advantages of the claimed invention.
The Examiner respectfully submits that the applicant must compare the instant application with the closest art. Evidence of unexpected results must be commensurate in scope with the subject matter claimed. In re Linder 173 USPQ 356. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside (i.e. as well as the upper and lower limits) the claimed range to show the criticality of the claimed range. In re Hill 284 F.2d 955, 128 USPQ 197 (CCPA 1960). Furthermore, it is noted that the features upon which applicant relies (i.e., unexpected advantages) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
The applicant argues that there is also no reason or suggestion provided by Depasquale or JP'944 for switching the PCC of Depasquale to a cationic PCC and certainly no suggestion of the unexpected stability resulting using the claimed method of the invention.
The Examiner respectfully submits that Although US’398 is silent that the PCC is cationic, it does teach that the precipitated calcium carbonate which is used in the invention can be made by any of the known techniques for the manufacture of PCC. Such techniques usually involve passing carbon dioxide through an aqueous solution of slaked lime, calcium oxide, to form an aqueous slurry of precipitated calcium carbonate (col. 3, lines 35-37). JP’994 discloses in the production method of PCC the surface charge of light calcium carbonate exhibits weak cationicity ([0008]).
Conclusion
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.
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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731
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