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 .
This office action is in response to applicant’s amendments filed July 10, 2025.
Claims 1-7 and 9-12 are pending. Claim 8 has been cancelled. Claim 7 has been amended. Claims 1-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions.
Claims 7,9,11 and 12 stand rejected under 35 U.S.C. 103 as being unpatentable over Ghisalberti (WO 01/55262) in view of Zheng (WO 2007/090355) for the reasons set forth below.
The rejection of claims 7,10 and 12 under 35 U.S.C. 103 as being unpatentable over Rosol (CZ 2015647) in view of Schick (US 3,865,240), Modinger (WO 2016/001683) and Ejima (One-Step Assembly of Coordination Complexes for Versatile Film and Particle Engineering. Science. Vol 341, 12 July 2013, pages 154-157) is withdrawn in view of applicant’s amendments to the claims.
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.
Claims 7,9,11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ghisalberti (WO 01/55262) in view of Zheng (WO 2007/090355).
Ghisalberti teaches treating microparticulate bentonite as a filler with a solution of polyphenol as a vegetal substance and lake-forming ions as a mordant to form a dyed pigment with distinctive color by its chroma, which is the purity, saturation and intensity of the hue, and value (page 2, lines 19-30; page 3, lines 13-26; page 14, lines 8-10). Ghisalberti teaches the polyphenols can be selected from flavonoids, open ring polyphenols, flavones, catechins and tannins (page 5-6). Ghisalberti teaches the mordants make up the lake-forming ions (page 11, lines 11-14). Ghisalberti teaches combining the fillers, polyphenols and lake-forming ion in a solution (page 21, examples). Ghisalberti teaches the vegetal substance (polyphenol) and the lake-forming ion (mordant) form a complex (chelate) and form an outer layer on the core (adsorbs) white filler such as bentonite (page 3, lines 6-11,26). Ghisalberti teaches that the filler (bentonite) can be any solid microparticle (page 3, lines 12-15) suspended in water, the zinc salt (mordant) is added and then a vegetal substance (polyphenol) which precipitates with the salt to form a complex of a firmly adhering vegetal lake to the filler (adsorbs, page 10, lines 14-21). Ghisalberti teaches vegetal substances absorbed onto the filler adding the mordant to result in a phytopigment (page 11, lines 1-5). Ghisalberti further teaches a reaction of the mordants with the vegetal substances (polyphenols). Ghisalberti teaches all three orders of mixing (1. polyphenol + filler and then mordant, 2. mordant +filler, then polyphenol or 3. Mordant + polyphenol, then filler) produce the same core filler, outer colored coating of complexed mordant/polyphenol pigment (page 10, line 29 to page 11, line 15). Ghisalberti teaches compositions with 3 g curcumin (polyphenol, 3g of 90% pure curcumin= 2.91g and 2.91g / 368.38g/mol = 0.0078 mol), 10 g AL2O3 (filler) and 110 ml ZnCl2 (mordant, 110ml in 1M solution= .0090M) for a 1:1.15 ratio of polyphenol to mordant, wherein the filler is 8.13% of the total amount of the filler, polyphenol and mordant (page 20, line 16-17; page 22, example 9). Using bentonite instead of Al2O3 filler is obvious at the same amount. Ghisalberti teaches the pigments are used in cosmetics (page 1, lines 1-7).
Ghisalberti does not specify purifying and separating the bentonite, or the particle size.
Zheng teaches that purified and separated bentonites of particle sizes of 5 µm are conventionally used in cosmetic compositions (page 1, paragraphs 3-4; page 9, next to last paragraph; page 25, 5th paragraph)
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Ghisalberti by starting with separated purified bentonite of the claimed particle sizes as Zheng teaches separated, purified bentonites of particle sizes such as 5 µm are conventionally incorporated into cosmetic compositions and Ghisalberti invites the inclusion of bentonite microparticles to be dyed with mordants and polyphenols to form a dyed pigment with distinctive color by its chroma, which is the purity, saturation and intensity of the hue, and value and included in the cosmetics. It would have been obvious to chelate the mordant and the polyphenol as Ghisalberti teaches these compounds react to form a complex (chelate) and it coats the filler which can be bentonite to form a colored pigment. Accordingly the order of mixing steps is taught by Ghisalberti as non-critical as different orders of the combination of components produces the same product.
Changing the order of steps does not render a claimed process non-obvious over the prior art, see Ex parte Rubin, 128 USPQ 440,441,442 (POBA 1959). In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to not patentably distinguish the processes, see Ex parte Rubin, 128 USPQ 159 (PO BdPatApp 1959).
Applicant has not demonstrated the criticality of the order of mixing, so selecting the claimed order would be obvious or doing the mixing of all three components simultaneously instead of in sequence as the final result is a single mixture of the three components. Applicant’s claims have no time limitations on the mixing or how long mixing of the polyphenol and mordant occurs before adding the bentonite. By applicant’s claims, the polyphenol and mordant can be mixed in mere seconds and added to the bentonite, which would be almost the same as simultaneously combining all three components.
Claims 7,9,10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN 107081137A) in view of Wei (CN 107812510A) as evidenced by Millipore Sigma document (Particle Size Conversion table). .
Wang teaches mixing in 50 ml distilled water 2g lignin (polyphenol), 9.66g FeCl3 (Fe3+ mordant) and 2g bentonite for 30 min before further processing (page 3, paragraph 3; page 5, examples 1-3). This is 3.1% bentonite in the formulation (2g bentonite in 63.66g total formulation (50g water + 2g lignin + 2g bentonite + 9.66g FeCl3). Wang teaches the lignin is grafted onto the bentonite (adsorbed, page 2, paragraph 1)
Wang does not specify purifying and separating the bentonite or the claimed particle size, chelating the polyphenol and the mordant, the order of mixing or the chelate adsorbing onto the bentonite.
Wei teaches bentonite is a known effective adsorbent used in waste water treatment (page 2, paragraph 10) wherein bentonite is separated from sand and purified, crushed and sieved to 200 mesh (page 3 last paragraph, page 4, first paragraph-4; page 5, paragraph 2, last paragraph; page 6, first paragraph ). The Millipore Sigma document provides evidence that 200 mesh is 0.074mm or 74µm (page ¾).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Wang by obtaining separated and purified bentonite of 74 µm as Wang teaches using a bentonite as an effective adsorbent which is employed at 2oo mesh (74µm) in waste water treatment. Selecting known effective separated and purified bentonite in the claimed particle size to maximize adsorption is obvious.
It would have been further obvious that the methods of Wang would produce a chelate between the polyphenol and mordant (the presence of tannin and Fe(III) in water would form a chelate) and adsorb to bentonite as this is the same combination of components as applicant. It would be expected that the interaction of the FeCl3 and lignin in the formulation would form a complex and adsorb to the bentonite as applicant’s specification teaches mordanting is effective when the mordant is added prior to, simultaneously with or after dyeing to improve dye adsorption and increase chromaticity (page 8, lines 1-10). It is noted that the bentonite, ferric chloride, lignin and water are the only elements present in the mixture for 30 minutes and stirred to interact.
Regarding the order of mixing the components, Wang teaches mixing tannin, FeCl3 and a bentonite in water for 30 minutes while stirring Wang also specifies the lignin becomes grafted onto the bentonite, therefore the limitation of adsorption is met by the grafting. Regarding further processing steps of adding borohydride and other reactants, this is subsequent to the formation of the bentonite-lignin-fecl3 particle. At the timepoint for 30 minutes when the three components are mixed together in water with no additional chemicals present, applicant’s invention limitations are met. It would have been obvious to first mix the tannin and FeCl3 before adding the bentonite as this is simply an order of mixing materials to arrive at the same final suspension of the three components. Changing the order of steps does not render a claimed process non-obvious over the prior art, see Ex parte Rubin, 128 USPQ 440,441,442 (POBA 1959). In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to not patentably distinguish the processes, see Ex parte Rubin, 128 USPQ 159 (PO BdPatApp 1959).
Applicant has not demonstrated the criticality of the order of mixing, so selecting the claimed order would be obvious or doing the mixing of all three components simultaneously instead of in sequence as the final result is a single mixture of the three components. Applicant’s claims have no time limitations on the mixing or how long mixing of the polyphenol and mordant occurs before adding the bentonite. By applicant’s claims, the polyphenol and mordant can be mixed in mere seconds and added to the bentonite, which would be almost the same as simultaneously combining all three components.
Response to Arguments
Applicant's arguments filed regarding Ghisalberti have been fully considered but they are not persuasive. Regarding the order of mixing the components, applicant’s specification teaches mordanting is effective when the mordant is added prior to, simultaneously with or after dyeing to improve dye adsorption and increase chromaticity (page 8, lines 1-10) and when the mordant complex is formed it is sprayed or applied as a coating onto the bentonite. Ghisalberti teaches the vegetal substance (polyphenol) and the lake-forming ion (mordant) form a complex (chelate) and form an outer coating layer on the core white filler such as bentonite (page 3, lines 6-11,26) which is the same complex and same outer coating as applicant as the identical three components are used. Ghisalberti teaches that the filler (bentonite) can be suspended in water, the zinc salt (mordant) is added and then a vegetal substance (polyphenol) which precipitates with the salt to form a complex (chelate) of a firmly adhering vegetal lake to the filler (page 10, lines 14-21). Ghisalberti further teaches a reaction of the mordants with the vegetal substances (polyphenols). Ghisalberti teaches all three orders of mixing (1. polyphenol + filler and then mordant, 2. mordant +filler, then polyphenol or 3. Mordant + polyphenol, then filler) produce the same core filler, outer colored coating of complexed mordant/polyphenol pigment (page 10, line 29 to page 11, line 15). The third embodiment is applicant’s preferred order of steps. It would have been obvious to first mix the polyphenol and mordant to form a chelate before adding the bentonite as this is simply an order of mixing materials to arrive at the same final suspension of the three components wherein a firmly adhering complex of the mordant and polyphenol are adsorbed to the bentonite.
Changing the order of steps does not render a claimed process non-obvious over the prior art, see Ex parte Rubin, 128 USPQ 440,441,442 (POBA 1959). In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to not patentably distinguish the processes, see Ex parte Rubin, 128 USPQ 159 (PO BdPatApp 1959).
It is noted the mixing orders of Ghisalberti are “preferred embodiments” of the acid-base reaction and therefore do not limit the invention to just these particular methods of combination (pages 8-9). Ghisalberti explicitly teaches a complex of the polyphenol and mordant and that complex is adhered firmly as a coating on the outside of the bentonite. Ghisalberti further teaches when the polyphenol is added to the bentonite it adsorbs and then complexes with the mordant to coat the bentonite. Applicant has not demonstrated the criticality of the order of mixing with experimental data commensurate in scope with the claims and commensurate to the closest prior art of record. Applicant simply argues that the process is different which is conclusory. Applicant’s arguments are conclusory statements not supported by factual evidence, see In re Lindner, 457 F.2d 506, 173 USPQ 356 (CCPA 1972).
Applicant’s specification further demonstrates that all that is required to achieve the invention is to bring the complex in contact with the bentonite, which is performed in Ghilsalberti, and that mordanting is effective when the mordant is provided before, during aor after dyeing. So selecting the claimed order would be obvious or doing the mixing of all three components simultaneously instead of in sequence as the final result is a single mixture of the three components. Applicant’s claims have no time limitations on the mixing or how long mixing of the polyphenol and mordant occurs before adding the bentonite. By applicant’s claims, the polyphenol and mordant can be mixed in mere seconds and added to the bentonite, which would be almost identical to simultaneously combining all three components.
Accordingly the rejections are maintained.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMINA S KHAN whose telephone number is (571)272-5573. The examiner can normally be reached Monday-Friday, 9am-5:30pm EST.
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/AMINA S KHAN/Primary Examiner, Art Unit 1761