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 .
Response to Arguments
Applicant has amended claims 1 – 19 (either explicitly or by virtue of dependency) and has added new claim 20. New matter has been found in the amended claims.
Applicant’s arguments & amendments with respect to the previous rejection of claims 1 – 19 under 35 U.S.C. § 112(b) have been fully considered and ultimately found persuasive in view of the amended claims. Applicant has amended claims 1 – 19 overcoming the 35 U.S.C. § 112(b) rejection. The original rejection of claims 1 – 19 under 35 U.S.C. § 112(b) is withdrawn.
Applicant's arguments with respect to the previous rejection of claims 1 – 19 under 35 U.S.C. § 103 over Rentsch et al. (WO 2017/121675 A1) in view of Gane et al. (US 2011/0269887 A1) filed 25 June 2025 have been fully considered but they are ultimately found not persuasive in view of the amended claims. This rejection is maintained and reproduced below.
Applicant points to Example 7 in Rentsch and argues the polymer employed was being used as a dispersant, and not a grinding aid as described in the claims. Applicant argues that during the dispersion of particles, the size of said particles is maintained at best & not reduced, and that Rentsch’s polymer, being employed as a dispersant, would only aid in deflocculation in the treated matter and not a particle size reduction.
Examiner agrees with Applicant, however, points to the previous version of the claims (which the rejection was drawn to) which made no claim to a reduction in particle size. The only limitations on particle size are found in claim 4 & claim 19, neither of which are drawn to the material (M), but rather the ground material. Thus, claims 4 & 19 do not claim a reduction in particle size.
Applicant argues the claimed method employs a copolymer to aid grinding a mineral matter & thus obtaining a particle-size reduction. Applicant states this constitutes a significant technical difference from the approach in Rentsch.
Examiner considers, that if obtaining a particle-size reduction via employing a copolymer to aid in grinding a mineral matter, results in a departure from &/or a significant technical difference from methods taught by Rentsch, the end result of said technical difference (i.e., particle size reduction) must be explicitly claimed or at the very least disclosed in the instant specification.
Applicant continues, stating Gane fails to remedy the claimed deficiencies of Rentsch stating there would have been no expectation that using a polymer from Gane would have better dispersed Rentsch’s material, nor any basis to believe that grinding Rentsch’s material would have maintained the quality of Rentsch’s material.
Examiner would like to note to applicant that Gane explicitly teaches the ion neutralized water-soluble polymer is used as a grinding enhancer (Abstract). Thus, one skilled in the art would recognize said grinding enhancer is a grinding aid. This abides by teachings of Rentsch, as Rentsch explicitly states grinding of calcium carbonate may be carried out via any conventional means such that comminution predominately results therefrom (p. 15, line 24 – p. 16, line 8). Comminution is understood in the art as a reduction of average particle size of a solid material.
Finally, the limitation of ‘…a grinding aid comprising a copolymer (P)…’ is an intended use limitation which did not further limit the claimed copolymer. It is inconsequential how said copolymer is applied in the prior art; it is the same copolymer.
The rejection is maintained.
Claim Rejections - 35 USC § 112 (a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1 – 20 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.
Regarding claim 1, the added limitations underlined in lines 6-7 of claim 1 are not expressly described in the instant specification.
Regarding claims 2 – 20, claims 2 – 20 all depend from independent base claim 1 and inherent all the limitations established therein. Similarly, claims 2 – 20 also inherent the introduction of new matter recited in claim 1, and are therefore rejected for the same reason.
Claim Rejections - 35 USC § 112 (b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 2, 4, 10, 12, 13 & 17 are rejected under 35 U.S.C. 112(b) for being indefinite.
Regarding claim 2, claim 2 recites the term ‘the ground material’. In view of the amendments to the claims, there is insufficient antecedent basis for this term.
Regarding claim 4, claim 4 has been amended to depend from claim 1 and recites the term ‘the ground material’. In view of the amendments to the claims, there is insufficient antecedent basis for this term.
Regarding claim 10, claim 10 has been amended to depend from claim 1 and recites the term ‘the drying’. There is insufficient antecedent basis for this term.
Regarding claim 12, claim 12 recites the term ‘total material’ weight. Unable to determine, without speculation, if the ‘total material’ is just the material (M) or the material (M) & copolymer (P), or the ground, dried material. There is insufficient antecedent basis for this term.
Regarding claim 13, claim 13 makes reference to ‘the material (M)’ of claim 1, and also makes reference to ‘the material’ (last line of claim 13). In view of the amendments to the claims, there is insufficient antecedent basis for this term (i.e., ‘the material’).
Regarding claim 17, claim 17 is rejected for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 17 recites the presence of an acrylic acid optionally in salt form, but said claim ends with a definitive neutralization (fully or partially) of the copolymer’s carboxylic acid. Therefore, claim 17 states neutralization is optional, ending with at least a partial neutralization.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 – 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Rentsch et al. (WO 2017/121675 A1) in view of Gane et al. (US 2011/0269887 A1)*.
*The additional citations herein from previously presented prior art which were not present in the initial office action are only entered herein as warranted by the amended claims.
Regarding claims 1, 2, 3, 7, 14 & 17, Rentsch teaches an invention of a method for the treatment of a surface-reacted calcium carbonate (Abstract) with the calcium carbonate then suitable for use in polymer compositions, preferably paper and food packaging applications (p. 6, lines 19-23). The surface-reacted calcium carbonate may be provided in the form of an aqueous suspensions or in a dry form (p. 26, lines 9-11).
Rentsch further teaches said aqueous suspension comprising water, the calcium carbonate containing material, 100% sodium-neutralized polyacrylate (p. 64, Example 7/Slurry 7). The copolymer which was added to Example 7 is styrene-butadiene (p. 70, Example 13). The calcium carbonate is ground, either via wet grinding or dry grinding. The wet ground calcium carbonate containing material may be further washed & dewatered via flocculation or evaporation prior to drying. The drying may be done via spray drying. Rentsch explicitly states grinding of calcium carbonate may be carried out via any conventional means such that comminution predominately results therefrom (p. 15, line 24 – p. 16, line 8). Comminution is understood in the art as a reduction of average particle size of a solid material. Thus, Rentsch teaches ‘grinding’ to result in a reduction of particle size.
Rentsch also discloses treating the calcium carbonate with a hydrophobizing agent (like polyhydrogensiloxane, inert silicone oil & more (p. 85, claim 9). Rentsch provides several examples which resulted in a reduced hygroscopicity from this method (p. 70, Table 2).
Rentsch therefore provides most of the teachings needed to create the invention of the present application, however, Rentsch is silent on the polydispersity index of the copolymer used and does not further teach the molecular weight of the copolymer.
In the same field of endeavor, Gane teaches a process for manufacturing dry or aqueous mineral material suspensions using neutralized water-soluble organic polymer as a dispersant and/or grinding aid, said material is suitable for use in paper and plastics (Abstract). When detailing examples of inventive embodiments, Gane teaches the use of a sodium polyacrylate suitable for dispersing calcium carbonate. The sodium polyacrylate has an Mw of 12,500 and a polydispersity index of 2.8 (p. 6, [0110]).
It would have been obvious to one of ordinary skill in the art at the time of filing to create the invention of the present application by abiding by Rentsch (disclosed above) & substituting the 100% sodium-neutralized polyacrylate with an equivalent 100% sodium-neutralized polyacrylate having a Mw of 12,500 & a PI of 2.8, as Gane teaches the suitability of an equivalent compound with these parameters.
Therefore, the inventions detailed by Rentsch & Gane disclosed above collectively teach a method, which reduces the hygroscopicity of the material, with said method comprising preparation of an aqueous suspension comprising water, the calcium carbonate containing material, 100% sodium-neutralized, further comprising a copolymer and (meth)acrylic acids, followed by wet grinding (resulting in comminution of the material being ground, (i.e., reduced particle size)) and then partially separating the water (via dewatering, flocculation or evaporation) prior to spray drying. An optional step of treatment with hydrophobizing agent is disclosed as well. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Rentsch in view of Gane as detailed above reads on the limitations established by claims 1, 2, 3, 7, 14 & 17.
Regarding claims 4, 5, 6 & 19, maintaining the modification of Rentsch in view of Gane as previously described, Rentsch teaches the preferable weight median particle size d50 of the calcium carbonate containing material to be anywhere from 0.2 – 5.0 μm (p. 17, lines 9-11). In an embodiment, the ground material which was used in Powder 4 (the precursor to Example 7) has a d50 value of 2.4 μm (p. 63, line 12). For the aqueous suspension embodiment(s), Rentsch teaches the material containing the calcium carbonate to be present in amounts of 3-60 wt.% (p. 17, lines 19-20) relative to the total weight of the slurry.
Rentsch defines ‘drying’ as carrying out heating until the moisture content of the material comprising calcium carbonate is in the range of 0.001 – 20 wt.% (p. 11, lines 5-10). Therefore, ‘drying’ as defined by Rentsch also reads on partially separating the water from the suspension, as well as drying in the sense of a remaining moisture content of 0.001 wt.% (i.e., completely dry). In an embodiment, example 7/slurry 7 is shown to comprise 500g of Powder 4, 400g DI water, 120g ethanol & ~12g sodium-neutralized polyacrylate (p. 64, Example 7/Slurry 7). Maintaining the water-to-ethanol ratio (1.0 : 0.3) used in example 7 / slurry 7 and allowing the maximum amount of moisture to be retained (i.e., 20 wt.%), after drying/partially separating the water, the ground material comprising calcium carbonate will be present in the suspension at a minimum amount of approximately 76 wt.%. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claims 8, 9 & 20, maintaining the modification of Rentsch in view of Gane as previously described, Rentsch teaches an embodiment (example 13) comprising 100 parts CaCO3 and 6 parts styrene-butadiene copolymer (p. 70, lines 9-10). This results in a copolymer content of 0.0566 wt.%. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. When detailing water separation methods, Rentsch states the slurry/aqueous suspension may be mechanically dewatered & dried (p. 16, lines 26-27), or under vacuum by virtue of reduced pressure relative to ambient pressure (p. 48, lines 12-16).
Regarding claims 10 – 13 & 18, maintaining the modification of Rentsch in view of Gane as previously described, Rentsch teaches the drying step may be conducted via spray drying (p. 15, line 26 – p. 16, line 8). A mechanically produced fluidized bed is appropriate if operating under dry conditions (p. 36, lines 7-13). When discussing the hydrophobizing agent, Rentsch discloses suitable examples thereof, citing a polyhydrogenosiloxane, inert silicone oil, a C4 – C24 aliphatic carboxylic acid, a C2 – C30 linear, branched, aliphatic or cyclic mono-substituted succinic anhydride, a mixture/blend of monoesters and diesters of phosphoric acid, or an aliphatic aldehyde (p. 5, line 27 – p. 6, line 12). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
As Rentsch teaches (p. 11, lines 5-10) ‘drying’ to mean the remaining moisture content may be in amounts of 0.001 – 20 wt.%, by abiding by the teachings of Rentsch, the ground, dried material will comprise less than 0.5 wt.% moisture relative to the total weight. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Rentsch teaches how the hygroscopicity (referred to by Rentsch as Moisture pick up susceptibility) was measured in the identical way as detailed by claim 13 of the present application. The ‘normalized moisture pick up susceptibility’ is defined by Rentsch as the moisture pick up susceptibility (mg/g) divided by the specific surface area (in m2/g), resulting in dimensions of mg/m2 for the samples (p. 58, lines 13-24).
Rentsch teaches the ground calcium carbonate containing material may have a BET specific surface area the amounts of 15 m2/g – 200 m2/g (p. 23, lines 7-8), with Rentsch providing the BET specific surface area of the ground calcium carbonate containing material (used in their embodiments), as 37 m2/g (p. 63, lines 12-13). Table 2 (p. 70) shows the water/moisture pick up susceptibility (in mg/g). Inventive examples 5 & 6 report a value of 6.2 mg/g. Abiding by the math taught by Rentsch, both inventive examples 5 & 6 have a hygroscopicity of approximately 0.17 mg/m2, reading on the corresponding limitation established by claim 13. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claims 15 & 16, maintaining the modification of Rentsch in view of Gane as previously described, Rentsch teaches the calcium carbonate material source is selected from the group comprising marble, chalk, dolomite, limestone, aragonitic, vaterite or calcite (p. 83, claim 2). The calcium carbonate material source may be of synthetic origin via reaction product of calcium carbonate (precipitated or ground) with carbon dioxide & one or more proton donors (p. 83, claim 1). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/MARK KOPEC/Primary Examiner, Art Unit 1762