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 .
Election/Restrictions
Newly submitted claims 23 and 24 are directed to an invention that lacks unity with the invention originally claimed for the following reasons:
Even though the inventions of all the groups require the technical feature of a synthetic phyllosilicate, this technical feature is not a special technical feature as it does not make a contribution over the prior art Koichi et al. (JP H06246175 A) (Koichi).
Koichi teaches a swelling layered compound that may be phyllosilicate minerals such as synthetic mica (Koichi, p. 2, Paragraph 7).
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 Accordingly, claims 23 and 24 are withdrawn from consideration as being directed to a nonelected invention.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.
Claim Rejections - 35 USC § 112
Claims 1-2, 5-7, 9-13, 16-17, and 21-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites, “A method for drying a non-swelling synthetic phyllosilicate, the method comprising: providing a mixture of the non-swelling synthetic phyllosilicate” (emphasis added) and “wherein the non-swelling phyllosilicate is selected from talc, pyrophyllites, kaolinites, serpentines, chlorites, and mixtures of one or more thereof” (emphasis added). However, there is only support for a synthetic talc composition comprising:
“swelling TOT-TOT (tetrahedron-octahedron-tetrahedron) interlayer particles, is formed by interlayering between:
at least one non-swelling mineral phase formed by a stack of elementary laminae of the 2/1 phyllogermanosilicate type and having the chemical formula –(SixGe1-x)4M3O10(OH)2–, and
at least one swelling mineral phase…” (emphasis added)
Specification, p. 7, lines 11-32; p. 8, line 1
And support for,
“In certain embodiments, the synthetic mineral particles of said talc composition are
phyllosilicated mineral particles displaying at least one non-swelling phase formed by a
stack of elementary laminae of the 2/1 phyllogermanosilicate type and having the
chemical formula (SixGe1-x)4M3O10(OH)2, and wherein x represents a real number of the interval [0; 1], and M denotes at least one divalent metal and has the chemical formula Mgy(1)COy(2)Zny(3)Cuy(4)Mny(5)Fey(6)Niy(7)Cry(8); each y(i) representing a real number of the interval [0; 1]” (emphasis added)
Specification, p. 16, lines 7-13
Therefore, there is no support for drying a non-swelling synthetic phyllosilicate without the swelling phases, wherein the non-swelling phyllosilicate is any form of talc. And there is no support for non-swelling phyllosilicates being pyrophyllites, kaolinites, serpentines, chlorites, and mixtures thereof. There is only support for a non-swelling phyllosilicate being a talc composition displaying at least one non-swelling phase having the chemical formula (SixGe1-x)4M3O10(OH)2, and wherein x represents a real number of the interval [0; 1], and M denotes at least one divalent metal and has the chemical formula Mgy(1)COy(2)Zny(3)Cuy(4)Mny(5)Fey(6)Niy(7)Cry(8); each y(i) representing a real number of the interval [0; 1].
Regarding dependent claims 2, 5-7, 9-13, 16-17, and 21-22, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
Response to Arguments
In response to applicant’s amendments, a new 35 U.S.C. 112(a) new matter rejection is necessitated as set forth above.
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.
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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