DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 7, 2025 has been entered.
Claims 1 and 17 have been amended. Claims 1-6, 8-10, 12-14, 17-19 and 21-37 are currently pending and under examination.
All previous rejections are withdrawn, as applicants have amended to limit the dispersants to those based on phosphonic acids, rather than phosphoric acids, as suggested by El-Shoubary ‘126.
However, upon further consideration, a new ground(s) of rejection is set forth below.
The texts of those sections of Title 35 U.S. Code are not included in this section and can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 6, 8-10, 17-18, 23, 26-29 and 32-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Woditsch (US 4,186,028).
Woditsch discloses adding phosphonocarboxylic acid before drying after a known inorganic aftertreatment of TiO2 pigments, disclosing that after drying and grinding, the TiO2 obtained shows a high wetting power for water and be converted easily to a highly concentrated pigment suspension (col. 3, ll. 30-40), disclosing that a combination of 0.05-0.2 wt% phosphonocarboxylic acid with 0.05-1.0 wt% alkanolamines is preferable, where the phosphonocarboxylic acid is specifically listed to include phosphonobutane-1,2,4-tricarboxylic acid. Woditsch exemplifies the inorganic aftertreatment of TiO2 as aluminum oxide (col. 3, ll. 50-56). Woditsch also discloses that filter cakes are “liquified” by the addition of the phosphonocarboxylic acid and are transported in this form, for example to a following drying or calcining unit (col. 3, ll. 41-47). This suggests the treated pigment in dry form.
Woditsch does not disclose whether or not the dispersing agent is deposited on the surfaces of the titanium dioxide, as claimed; however, Woditsch discloses the same method as described and further claimed by applicants, specifically addition of the dispersing agent to a wet filter cake. Therefore, the dispersing agent of Woditsch is inherently deposited on the surfaces of the titanium dioxide particles.
Woditsch discloses that the treated pigments as an aqueous fluid dispersible filler (Abstract).
Woditsch does not teach the pigments made using the above dispersing agents as having anti-corrosion properties; however, phosphonocarboxylic acids are known corrosion inhibitors, as evidenced by Clark (col. 4, ll. 12-17). Therefore, the treated pigments of Woditsch inherently possess anti-corrosive properties, as claimed.
Woditsch anticipates instant claims 1-4, 8-9, 17-18, 26-29 and 32-33.
Claim 6 can be rejected, as claim 6 only limits the organic dispersant when it is a phosphonic acid or salt, where phosphonocarboxylic acids are listed as alternatives.
Claim 10 can be rejected, as claim 9 only limits the organic dispersant when it is a polymeric dispersant, where low molecular weight organic dispersants of phosphonocarboxylic acids are listed as alternatives.
Claim Rejections - 35 USC § 103
Claims 5, 6, 23 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Woditsch (US 4,186,028), as applied above to claims 1-4, 6, 8-10, 17-18, 26-29 and 32-33, and further in view of Roberts (US 3,758,322).
Woditsch anticipates instant claims 1-4, 8-10, 17-18, 26-29 and 32-33, as described above and applied herein as such, as Woditsch discloses treating alumina-treated TiO2 with phosphonocarboxylic acid and an alkanolamine prior to drying to form a water dispersible pigment.
Woditsch discloses the alkanolamine to include diethanolamine, mono- or di-isopropanolamines, ethanolamine and 2-amino-2-methyl-1-propanol amine, but does not teach the claimed alkanolamines.
Woditsch cites DE 2233517, which is the same as US 3,758,322 to Roberts, in the background section for known aqueous pigments suspensions (col. 1, ll. 5-10). Woditsch discloses that the phosphonocarboxylic acids may be used in combination with the usual, known dispersants which results inter alia in improved properties with regard to the fluidity and sedimentation of the slurries (col. 1, ll. 58-62).
Roberts teaches dispersants to include 2-amino-2-methyl-1-propanol and triethanolamine (col. 2, ll. 24-30).
Triethanolamine is a known functional homologue to ethanolamine and diethanolamine, and Roberts teaches that it is a functionally equivalent dispersant to the 2-amino-2-methyl-1-propanol and mono- and diethanolamines taught by Woditsch.
Therefore, using triethanolamine as the alkanolamine in Woditsch is prima facie obvious, as Roberts teaches it as a functionally equivalent alkanolamine dispersant in the art of dispersing TiO2.
Woditsch in view of Roberts is prima facie obvious over instant claims 5 and 30-31.
As to claims 6 and 23, Woditsch teaches that aminotrimethylene phosphonic acid can be used in place of phosphonocarboxylic acid (Table 5). While the fluidity and stability of the titanium dioxide is not as great when aminotrimethylene phosphonic acid, Woditsch shows that aminotrimethylene phosphonic acid can still be used to provide a dispersible modified TiO2 pigment.
Claims 12-14 and 34-37 are rejected under 35 U.S.C. 103 as being unpatentable over Woditsch (US 4,186,028), as applied above to claims 1-4, 6, 8-10, 17-18, 26-29 and 32-33, and further in view of Roe (US 3,649,323).
Woditsch anticipates instant claims 1-4, 8-10, 17-18, 26-29 and 32-33, as described above and applied herein as such, as Woditsch discloses treating alumina-treated TiO2 with phosphonocarboxylic acid and an alkanolamine prior to drying to form a water dispersible pigment.
Woditsch cites DE 2045141, which is the same as US 3,649,323 to Roe, in the background section for known aqueous pigments suspensions (col. 1, ll. 5-10). Woditsch discloses that the phosphonocarboxylic acids may be used in combination with the usual, known dispersants which results inter alia in improved properties with regard to the fluidity and sedimentation of the slurries (col. 1, ll. 58-62).
Roe teaches that a combination of polyhydric alcohol with an alkanolamine provides an improvement in dispersibility and resistance to flocculation in water (col. 1, ll. 69-73), where the polyhydric alcohol is listed to include sorbitol and mannitol and the alkanolamine is listed to include triethanolamine (TEA) (col. 1, ll. 58-67). Roe teaches the inclusion of 0.2-1 wt% of the polyhydric alcohol viscosity stabilizing agent (col. 2, ll. 20-34). Roe exemplifies a combination of 0.25 wt% TEA and 0.25 wt% sorbitol (Sample 2).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have added 0.2-1 wt% of the polyhydric alcohol viscosity stabilizing agent in combination with the alkanolamine of Woditsch, as Roe teaches that the combination of a polyhydric alcohol and alkanolamine provides an improvement in dispersibility and resistance to flocculation in water.
Woditsch in view of Roe is prima facie obvious over instant claims 12-14, and 34-36.
As to claim 37, glycerol is a known functional homologue to sorbitol and mannitol. Therefore, using glycerol in place of sorbitol in Woditsch in view of Roe is prima facie obvious and an improvement in dispersibility would be expected compared to a treated pigment without the glycerol.
Claims 1-5, 7-10, 12-14, 17, 21-22, 24 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over El-Shoubary (US 2006/0107873), as evidenced by Clark (US 4,366,076).
El-Shoubary teaches a dispersing agent for titanium dioxide comprising a salt and/or ester of: (i) an amine, alcohol and/or alkanol amine and (ii) a polyprotic acid (p. 3, [0036]), where the ratio of alkanol amine to polyprotic acid is 4:1 to about 20:1 (p. 3, [0034]), where the dispersing agent is present in an amount of 0.01-2 wt% (p. 4, [0042]).
El-Shoubary exemplifies the addition of 5.2 g (67% solids or 3.5 g) dispersing agent to 600 grams titanium dioxide, the dispersing agent prepared from a combination of 10.2 g polyphosphoric acid and 100 g triethanolamine (TEA). El-Shoubary teaches that phosphonic acid can be used as a functionally equivalent polyprotic acid to phosphoric acid; therefore, substituting phosphonic acid for the polyphosphoric acid in the example is prima facie obvious.
This modification suggests a reaction product of 10.2 g (0.13 mol) phosphonic acid and 100 g TEA (0.67 mol). 2 mol of TEA are required to fully neutralize the phosphonic acid (2 OH groups), suggesting the use of 0.26 mol of TEA (38 g) and 0.13 mol of phosphonic acid (10.2 g) to prepare the salt, leaving 62 g of excess/unreacted TEA present in the dispersing agent. This suggests the presence of 48.2 g salt and 62 g excess TEA, or a dispersing agent which comprises about 44% salt and 56% excess TEA, which when used in a total amount of 3.5 g to 600 g titanium dioxide, results in the presence of a salt in the amount of 1.5 g salt and 2 g excess TEA based on 600 g titanium dioxide, or about 0.25 wt% salt and 0.33 wt% TEA by weight based on the total amount of pigment, as claimed.
Phosphonic acid meets applicants’ low molecular weight compound.
El-Shoubary discloses that the alkanol amine and polyprotic acid can be added to a washed filter cake of the base particles prior to spray drying (p. 4, [0041] and claim 26), suggesting the modified pigment is in dry form.
El-Shoubary does not teach whether or not the dispersing agent is deposited on the surfaces of the titanium dioxide, as claimed; however, El-Shoubary teaches the same method as described and further claimed by applicants, specifically addition of the dispersing agent to a wet filter cake. Therefore, the dispersing agent of El-Shoubary is inherently deposited on the surfaces of the titanium dioxide particles.
El-Shoubary exemplifies the use of the pigments made using the above dispersing agents in latex paints (p. 6, Example 4), which are aqueous based coating compositions.
El-Shoubary does not teach the pigments made using the above dispersing agents as having anti-corrosion properties; however, phosphonate and triethanolamine are known corrosion inhibitors, as evidenced by Clark (col. 4, ll. 12-17). Therefore, one of ordinary skill in the art would expect the pigments made using the above dispersing agents to possess anti-corrosive properties, as claimed.
El-Shoubary is prima facie obvious over instant claims 1, 4, 5, 17, 21-22 and 25.
As to claims 2-3, El-Shoubary discloses surface treating the titanium dioxide base particles with silicon compounds, aluminum compounds, or zirconium compounds, which include the oxides thereof (p. 2, [0022]).
Claims 7-10 can be rejected, as claims 7-10 only limit the claimed invention when the organic dispersants are derived from phosphonate-based carboxylic acids, where phosphonic acids and salts thereof are listed as alternatives in claim 1, from which claims 7-10 depend.
As to claims 12-14 and 25, El-Shoubary discloses the addition of 0.2-0.4 wt% trimethylolpropane or pentaerythritol to the pigment (p. 2, [0024]).
As to claims 15 and 20, El-Shoubary exemplifies adding the treated titanium dioxide particles to latex paints (p. 6).
Claim 24 can be rejected, as claim 24 only limits the organic dispersant when it is a polymeric dispersant, where low molecular weight organic dispersants are listed as alternatives.
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over El-
Shoubary (US 2006/0107873), as applied above to claims 1-5, 7-10, 12-14, 17, 21-22, 24 and 25 and further in view of Story (US 4,978,396).
El-Shoubary is prima facie obvious over instant claims 1-5, 7-10, 12-14, 17, 21-22, 24 and 25, as described above and applied herein as such, as El-Shoubary teaches treating titanium dioxide wet filter cake with a combination of the reaction product of a phosphonic acid and an excess of triethanolamine, followed by spray drying.
El-Shoubary teaches adding the dispersing agents to a wet
filter cake; however, does not teach or suggest the method of making the wet
filter cake.
Story teaches preparing a wet filter cake to be treated with a dispersing agent. Story teaches wet milling untreated, unflocculated titanium dioxide
pigments, which meets applicants’ raw titanium dioxide particles, followed by
hydroclassification, filtration, and dewatering to form a wet filter cake.
El-Shoubary then teaches after wet treatment, the particles are recovered by filtration, washed, dried and then subjected to final comminution, or optionally wherein the washed and dried pigment can be micronized in a steam micronizer (p. 2, [0023]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have prepared a wet filter cake for wet treatment, as taught by Story, as Story is interested in treating wet filter cakes of titanium dioxide with organic dispersants as is El-Shoubary.
El-Shoubary in view of Story is prima facie obvious over instant claims 18-19.
Response to Arguments
Applicant’s arguments with respect to the instant invention have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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/Brieann R Johnston/
Primary Examiner, Art Unit 1766