DETAILED ACTION
Claim(s) 1-13 were rejected in the Office Action mailed 08/06/2025.
Applicants filed a Request for Continued Examination, and added claim(s) 14-15, on 11/06/2025.
Claim(s) 1-15 are pending, and claim(s) 4-6 and 8-13 are withdrawn.
Claim(s) 1-15 are rejected.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/06/2025 has been entered.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. US 11912847 B2 (patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the reasons set forth below.
The present claims require a spherical magnesium oxide comprising 300 to 2,000 ppm of boron and less than 1 ppm of lithium, having a volume-based cumulative 50% particle diameter (D50) measured by a laser diffraction/scattering particle size distribution measurement in a range of 3 to 200 pm and a sphericity read from a SEM photomicrograph of 1.00 to 1.20;
and a method for producing a spherical magnesium oxide, comprising the steps of: 1) reacting an aqueous magnesium chloride solution with an aqueous alkaline solution to prepare a magnesium hydroxide slurry, 2) drying and then firing the magnesium hydroxide slurry to prepare magnesium oxide particles, 3) forming a dispersion of the magnesium oxide particles and wet-grinding the magnesium oxide particles, 4) spray-drying the wet-ground magnesium oxide, and 5) firing the magnesium oxide granulated by the above step,
wherein, in at least one of the steps 1) to 4), an amount of boron is adjusted so that a content of boron after the firing is 300 to 2,000 ppm and a mixed lithium amount is controlled so that a content of lithium is less than 1 ppm.
The patent claims meet all limitations of the present claims. Specifically, patent claim 1 discloses a spherical magnesium oxide comprising 10 to 2,000 ppm of boron, and silicon and phosphorus in a total content of 300 to 4,000 ppm, having a volume-based cumulative 50% particle diameter (D50) measured by a laser diffraction/scattering particle size distribution measurement in a range of 3 to 200 µm and a sphericity read from a SEM photomicrograph of 1.00 to 1.10.
Given that patent claim 1 does not require lithium in the spherical magnesium oxide, it therefore would have been obvious to a person of ordinary skill in the art to choose the spherical magnesium oxide with very low or no lithium content, which would overlap with the range of the present claims.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Patent claim 6 discloses A method for producing a spherical magnesium oxide, comprising the steps of: 1) Reacting an aqueous magnesium chloride solution with an aqueous alkaline solution to prepare a magnesium hydroxide slurry, 2) Drying and then firing the magnesium hydroxide slurry to prepare magnesium oxide particles, 3) Forming a dispersion of the magnesium oxide particles and wet-grinding the magnesium oxide particles, 4) Spray-drying the wet-ground magnesium oxide, and 5) firing the magnesium oxide granulated by the above step,
wherein, in at least one of the steps 1) to 4), an amount of boron is adjusted so that a content of boron after the firing is 10 to 2,000 ppm and an amount of silicon and phosphorus is adjusted so that a total content of silicon and phosphorus is 300 to 4,000 ppm after the firing.
Given that patent claim 4 does not require the use of lithium in the method of producing spherical magnesium oxide, it therefore would have been obvious to a person of ordinary skill in the art to produce the spherical magnesium oxide with very low or no lithium content, which would overlap with the range of the present claims.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 14, as applied to claim 1, given that patent teaches a spherical magnesium oxide with an identical or substantially identical composition and structure, with those of the presently claimed, therefore, it is clear that the spherical magnesium oxide of patent would necessarily and inherently be able to impart a kneading torque value of less than 19.0 N·
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). See MPEP 2112.01 (I).
Regarding claim 15, as applied to claim 1, regarding wherein lithium is removed from the magnesium oxide to achieve the less than 1 ppm of lithium, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that patent meets the requirements of the claimed product, patent clearly meets the requirements of the present claim.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 11180688 B2 (patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the reasons set forth below.
The present claims require a spherical magnesium oxide comprising 300 to 2,000 ppm of boron and less than 1 ppm of lithium, having a volume-based cumulative 50% particle diameter (D50) measured by a laser diffraction/scattering particle size distribution measurement in a range of 3 to 200 pm and a sphericity read from a SEM photomicrograph of 1.00 to 1.20;
and a method for producing a spherical magnesium oxide, comprising the steps of: 1) reacting an aqueous magnesium chloride solution with an aqueous alkaline solution to prepare a magnesium hydroxide slurry, 2) drying and then firing the magnesium hydroxide slurry to prepare magnesium oxide particles, 3) forming a dispersion of the magnesium oxide particles and wet-grinding the magnesium oxide particles, 4) spray-drying the wet-ground magnesium oxide, and 5) firing the magnesium oxide granulated by the above step,
wherein, in at least one of the steps 1) to 4), an amount of boron is adjusted so that a content of boron after the firing is 300 to 2,000 ppm and a mixed lithium amount is controlled so that a content of lithium is less than 1 ppm.
The patent claims meet all limitations of the present claims. Specifically, patent claim 1 discloses a spherical magnesium oxide containing boron in an amount of 300 to 2,000 ppm and iron in an amount of 100 to 1,500 ppm, having a volume-based cumulative 50% particle diameter (D50) in the range of from 3 to 200 μm, as measured by a laser diffraction/scattering particle size distribution measurement, and having a sphericity of 1.00 to 1.20, as measured from viewing a SEM photomicrograph.
Given that patent claim 1 does not require lithium in the spherical magnesium oxide, it therefore would have been obvious to a person of ordinary skill in the art to choose the spherical magnesium oxide with very low or no lithium content, which would overlap with the range of the present claims.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Patent claim 7 discloses a method for producing the spherical magnesium oxide according to claim 1, the method comprising the steps of: 1) reacting an aqueous solution of magnesium chloride with an aqueous alkali solution to prepare a magnesium hydroxide slurry; 2) drying the magnesium hydroxide slurry and then calcining the dried slurry to prepare magnesium oxide particles; 3) subjecting the magnesium oxide particles in the form of a dispersion to wet grinding; 4) subjecting the resultant dispersion of the magnesium oxide to spray drying; and 5) calcining the resultant magnesium oxide, wherein, in any of the steps 1) to 4), the boron and iron contents are controlled so that the boron content and the iron content of the calcined magnesium oxide become 300 to 2,000 ppm and 100 to 1,500 ppm, respectively.
Given that patent claim 4 does not require the use of lithium in the method of producing spherical magnesium oxide, it therefore would have been obvious to a person of ordinary skill in the art to produce the spherical magnesium oxide with very low or no lithium content, which would overlap with the range of the present claims.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 14, as applied to claim 1, given that patent teaches a spherical magnesium oxide with an identical or substantially identical composition and structure, with those of the presently claimed, therefore, it is clear that the spherical magnesium oxide of patent would necessarily and inherently be able to impart a kneading torque value of less than 19.0 N·
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). See MPEP 2112.01 (I).
Regarding claim 15, as applied to claim 1, regarding wherein lithium is removed from the magnesium oxide to achieve the less than 1 ppm of lithium, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that patent meets the requirements of the claimed product, patent clearly meets the requirements of the present claim.
Claim Objections
Claim 15 is objected to because of the following informalities:
Claim 15, line 1, it is suggested to amend “lithium” to “the lithium”.
In order to provide consistency of the term “A spherical magnesium oxide” recited in claim 1, line 1, it is suggested to
amend “the magnesium oxide” to “the spherical magnesium oxide” in claim 15, line 2.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 7 and 14-15 are rejected under 35 U.S.C. 103 as obvious over Konishi et al., WO 2018150826 A1 (Konishi).
It is noted that when utilizing Konishi et al., WO 2018150826 A1, the disclosures of the reference are based on US 20190359873 A1 which is an English language equivalent of the reference. Therefore, the column and line numbers cited with respect to WO 2018150826 A1 are found in US 20190359873 A1.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Regarding claim 1, Konishi teaches a spherical magnesium oxide having high sphericity, having a volume-based cumulative 50% particle diameter (D50), as measured by a laser diffraction/scattering particle size distribution measurement, in the range of from 3 to 200 μm; and a high sphericity of 1.00 to 1.20, as measured from viewing a SEM photomicrograph, as well as smooth surface; having a boron content of 300 to 2,000 ppm (Konishi, Abstract).
Given that Konishi does not require lithium in the spherical magnesium oxide; and further teaches that a Li compound is purposely not added during the preparation of the spherical magnesium oxide, the reason why the spherical magnesium oxide has not only high sphericity but also smooth surface and has excellent moisture resistance and excellent filling properties is that a Li compound is not added, but boron and iron are added instead, therefore the spherical magnesium would have very low or no content of lithium, which overlaps with the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It therefore would also have been obvious for a person of ordinary skill in the art to choose a lithium content that is within a range of the presently claimed, in order to achieve high sphericity, smooth surface and excellent moisture resistance and excellent filling properties.
Regarding claim 2, as applied to claim 1, Konishi further teaches the volume-based cumulative 50% particle diameter (D50) of the spherical magnesium oxide, as measured by a laser diffraction/scattering particle size distribution measurement, can be preferably 15 to 150 µm (Konishi, [0009]).
Regarding claim 3, as applied to claim 1, Konishi further teaches the BET specific surface area can be 0.01 to 1.00 m2/g (Konishi, [0011]).
Regarding claim 7, as applied to claim 2, Konishi further teaches the BET specific surface area can be 0.01 to 1.00 m2/g (Konishi, [0011]).
Regarding claim 14, as applied to claim 1, given that Konishi teaches a spherical magnesium oxide with an identical or substantially identical composition and structure, with those of the presently claimed, therefore, it is clear that the spherical magnesium oxide of Konishi would necessarily and inherently be able to impart a kneading torque value of less than 19.0 N·
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). See MPEP 2112.01 (I).
Regarding claim 15, as applied to claim 1, regarding wherein lithium is removed from the magnesium oxide to achieve the less than 1 ppm of lithium, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Konishi meets the requirements of the claimed product, Konishi clearly meets the requirements of the present claim.
Response to Arguments
Applicant primarily argues:
“First, the Office provides no evidence and points to no excerpt in any cited reference that supports the conclusion that a magnesium oxide that is made without the intentional addition of lithium "would have a very low or no content of lithium." Instead, the Office appears to rely on a theory of inherency in making this assertion - i.e., that a magnesium oxide that is made without the intentional addition of lithium would necessarily have "very low or no content of lithium." This is not the case.
…
Accordingly, IP 2016-088838 directly contradicts the Office's assertion that a magnesium oxide made by a process in which "a Li compound is not added...would have very low or no content of lithium, which overlaps with the range [as] presently claimed." Quote from Office action, pages 10-11. And as IP 2016-088838 shows that magnesium oxides prepared without the addition of a lithium compound can have lithium contents on the order of 10 ppm, JP 2016-088838 also evidences that the magnesium oxides disclosed in Konishi do not necessarily or inherently have a lithium content of less than 1 ppm.”
Remarks, p. 4-8
The Examiner respectfully traverses as follows:
Firstly, Konishi teaches that a Li compound is purposely not added during the preparation of the spherical magnesium oxide, and the reason why the spherical magnesium oxide has not only high sphericity but also smooth surface and has excellent moisture resistance and excellent filling properties is that a Li compound is not added, but boron and iron are added instead (Konishi, [0010]), it therefore would have been obvious for a person of ordinary skill in the art to choose a lithium content that is within a range of the presently claimed, in order to achieve high sphericity, smooth surface and excellent moisture resistance and excellent filling properties.
Secondly, it is not required that in Konishi, the resulting magnesium oxide still contains about 10 ppm of lithium. Given that Konishi teaches a motivation to not contain Li, it therefore would have been obvious for a person of ordinary skill in the art to choose a lithium content that is very low or no lithium at all, within a range of the presently claimed, absent evidence to the contrary.
Applicant further argues:
“Instead, as discussed in the present specification, in order to achieve the especially low lithium content recited in the present claims, lithium must be actively removed from the magnesium oxide - even when the MgO is made without the addition of any lithium compounds. This method is discussed in paragraph 0024 of the present specification, which notes the additional steps required to remove lithium. Konishi does not appear to disclose or suggest removing lithium to achieve a lower lithium content. As such, those of ordinary skill in the art would not have found any reason to remove or reduce the amount of lithium naturally occurring in Konishi's magnesium oxides - which JP 2016-088838 evidences would be rather higher, for example, by an order or magnitude, than that recited in the present claims. Therefore, Konishi does not disclose or suggest a range of lithium content that overlaps or lies within the recited range. Quite to the contrary, Konishi - as evidenced by JP 2016-088838 - appears to disclose a much higher lithium content.”
Remarks, p. 8
The Examiner respectfully traverses as follows:
Firstly, it is not required that in Konishi, the resulting magnesium oxide still contains about 10 ppm of lithium.
Secondly, while in the examples of the present specification, lithium must be actively removed from the magnesium oxide, based on the selected raw materials and process of making, it is not required that Konishi, the resulting magnesium oxide still contains about 10 ppm of lithium.
Thirdly, even if lithium must be actively removed from the magnesium oxide in Konishi, given that Konishi teaches that a Li compound is purposely not added during the preparation of the spherical magnesium oxide, and the reason why the spherical magnesium oxide has not only high sphericity but also smooth surface and has excellent moisture resistance and excellent filling properties is that a Li compound is not added, but boron and iron are added instead (Konishi, [0010]), it therefore would also have been obvious for a person of ordinary skill in the art to choose a lithium content that is within a range of the presently claimed, e.g., achieved through actively removing lithium from the magnesium oxide, in order to achieve high sphericity, smooth surface and excellent moisture resistance and excellent filling properties.
Applicant further argues:
“Moreover, controlling the lithium content of the final magnesium oxide yields the remarkable effect of "excellent flowability." Specification, 0006, 0016, 0023. Konishi does not appear to disclose or suggest that the lithium content plays any role in flowability. Accordingly, those of ordinary skill in the art would not have found it obvious from Konishi to actively reduce the lithium content in order to achieve such a result. Therefore, independent claim 1, and all claims dependent therefrom, including claims 2, 3, and 7, as well as new claim 14, are allowable over Konishi.”
Remarks, p. 8
The Examiner respectfully traverses as follows:
It is noted, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” See MPEP 2145 II. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Given the magnesium oxide in Konishi is substantially identical to the spherical magnesium oxide used in the present invention, as set forth on pages 10-11 of Office Action mailed 08/06/2025, it is clear that the magnesium oxide in Konishi would intrinsically have the substantially identical advantages as the present invention.
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). See MPEP 2112.01 (I).
Applicant further argues:
“The Office also rejected claims 1-13 on the ground of nonstatutory double patenting as allegedly unpatentable over claims 1-13 of U.S. Patent No. 11,912,847 ("the '847 patent") and over claims 1-20 of U.S. Patent No. 11,180,688 ("the '688 patent"). In making these rejections, the Office states that the claims of the '847 and '688 patents do "not require lithium" and concludes from this that it would have been obvious to "choose the spherical magnesium oxide with very low or no lithium content." Office action, pages 5 and 7. Applicant again respectfully traverses.
The Office appears to rely on the absence of the recited claim element in the cited prior art references (the claims of '847 and '688 patents) to sustain an obviousness rejection. This is not sufficient to establish a prima facie case of obviousness. Instead, the Office must show that each and every element of the claim - including the lithium content - is disclosed in the prior art. Here, the Office has argued that the prior art does not disclose the recited element, and instead of providing another reference that does disclose that element, the Office simply argues that the absence itself would suggest something to the person or ordinary skill in the art. This is improper, and does not establish obviousness. Indeed, none of the claims of the '847 or '688 patents mention lithium, discuss why one of ordinary skill in the art would want to control the lithium content, nor provide any guidance or suggestion regarding such lithium content. Applicant therefore respectfully requests withdrawal of these rejections.”
Remarks, p. 8-9
The Examiner respectfully traverses as follows:
Given that U.S. Patent No. US 11912847 B2 and U.S. Patent No. US 11180688 B2 do not require lithium in the spherical magnesium oxide, it therefore would have been obvious to a person of ordinary skill in the art to choose the spherical magnesium oxide with very low or no lithium content, which would overlap with the range of the present claims, absent evidence to the contrary, as set forth on pages 5 and 7 of Office Action mailed 03/20/2025.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, the Examiner has fully considered Applicants’ arguments, but they are found unpersuasive.
Conclusion
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/KELING ZHANG/Examiner, Art Unit 1732