DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 8/26/25, claims 1, 3-12, 15-19, 22, 24-26 are currently pending in the application, with claims 11, 12, 15-19 being withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 1, 3-10, 22, 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Raper et al. (US 2013/0000518 A1), in view of Rentsch et al. (US 20150240056 A1) (references of record).
Regarding claims 1, 3, 22, 24-26, Raper teaches a paint composition comprising a mineral treated with a hydrophobizing agent (Ab.). Disclosed mineral may be calcium carbonate in ground/powdered form, such as from marble, limestone, dolomite, chalk etc. (read on a)) [0034]. Disclosed genus of hydrophobizing agents include maleic anhydride grafted polyethylene and maleic anhydride grafted polypropylene (read on b), component i.), fatty acids, such as aliphatic carboxylic acids having 10 to 30 carbon atoms and mixtures thereof (read on carboxylic acids), fatty acid amides, metal/ammonium stearate etc. (read on reaction products), said hydrophobizing agent being used in an amount of 0.1 to 10 wt.% of the mineral (Ab., [0008], [0028]-[0031], [0034], [0046]-[0047]).
Raper is silent on a calcium carbonate having claimed d98, comprising a treatment layer comprising a maleic anhydride grafted polyethylene/polypropylene polymer and a hydrophobizing agent as claimed, and having claimed properties.
As the outset, it is noted that when the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05.
In a related field of endeavor, Rentcsh teaches the use of mono-substituted succinic anhydride or a reaction product thereof, for use in surface-treated calcium carbonate filler for plastics, paints, adhesives etc. (Ab., [0046]-[0047], [0077]-[0078], ref. claims). Disclosed mono-substituted succinic anhydride include alkyl/alkenyl succinic anhydrides [0105]-[0150], and disclosed surface treated filler material has a d98 <15mm [0059]. Rentsch further prescribes an amount of 0.1 to 3 wt.% of mono-substituted succinic anhydride [0042], [0064], and teaches such surface treated filler as advantageously having low moisture pick up susceptibility, high volatile onset temperature, and a limited quantity of total volatiles evolved at temperatures of between 25 and 350°C [0033].
In view of the advantages taught in Rentsch, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to provide for a surface treated calcium carbonate having a d98 within the claimed range, and comprising a treatment layer comprising 0.1 to 10 wt.% of a maleic anhydride grafted polyethylene/ polypropylene, and 0.1 to 3 wt.% a mono-alkyl/alkenyl substituted succinic anhydride, based on the wt. of the filler, including in an amount within the claimed wt.% range and weight ratio range (referred to as Rejection 1 herein below).
In the alternative, Raper teaches as hydrophobizing agents, maleic anhydride grafted polyethylene/polypropylene, fatty acids, such as aliphatic carboxylic acids having 10 to 30 carbon atoms (read on carboxylic acids), fatty acid amides, metal/ammonium stearate (read on reaction products) etc., and mixtures thereof, i.e., equivalence thereof.
Given the teaching in Rentsch on advantages of calcium carbonates of disclosed d98 and treated with mono-substituted succinic anhydrides, and the teaching in Raper on suitable hydrophobizing agents, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to provide for a surface treated calcium carbonate having a d98 within the claimed range, comprising a treatment layer comprising 0.1 to 10 wt.% of a combination of maleic anhydride grafted polyethylene/polypropylene and a fatty acid/recation products/mixtures, based on their art recognized equivalence, and 0.1 to 3 wt.% of Rentsch’s mono-alkyl/alkenyl substituted succinic anhydride, based on the wt. of the filler, including in an amount within the claimed wt.% range and weight ratio range. It is prima facie obvious to combine equivalent materials when the equivalence is recognized by the prior art. See MPEP 2144.06. (referred to as Rejection 2 herein below).
Additionally, given that surface treated calcium carbonate resulting from the modification of Raper’s filler with mono-substituted succinic anhydrides may provide for the same components in amounts as in the claimed invention, a skilled artisan would reasonably expect the treated calcium carbonates of overlapping scope to provide for the claimed moisture pick-up susceptibility and basic flowability, absent evidence to the contrary. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
With regard to claims 4-6, relying on Rejection 1, Raper’s maleic anhydride grafted polyethylene/polypropylene, in combination with Renstch’s mono-substituted succinic anhydride obviates the claimed components of the treatment layer. It is noted that claim 6 does not necessarily limit the scope of claim 3.
Relying on alternative Rejection 2, Raper’s maleic anhydride grafted polyethylene/polypropylene and fatty acid/reaction products/mixture, in combination with Renstch’s mono-substituted succinic anhydride obviates the claimed components of the treatment layer.
With regard to claims 7, 10, Raper and Renstch teach calcium carbonate in ground/powdered form, such as from marble, limestone, dolomite, chalk etc. (Raper- [0034], Renstch- [0090]-[0091]).
With regard to claim 8, Renstch teaches calcium carbonate filler particles having properties within the claimed ranges as providing for the disclosed advantages [0033]-[0043].
With regard to claim 9, Raper teaches maleic anhydride grafted polypropylene and maleic anhydride grafted polyethylene, i.e., open to any type of polyethylene and polypropylene, including those within the scope of the claimed invention, absent evidence of criticality for the claimed species. Moreover, given that no comonomers are taught as being essential in the polypropylene chain, it would have been obvious to a skilled artisan to include a polypropylene homopolymer, which would be one of syndiotactic, atactic or isotactic type as in the claimed invention.
Response to Arguments
In view of the amendment dated 8/26/25, all rejections set forth in the nonfinal office action dated 5/27/25 are withdrawn and new grounds of rejections are presented herein above, relying on Raper-Rentsch combination. Applicant’s arguments and the Affidavit dated 8/26/25 have been duly considered.
Applicants argue that the data in Table 4 demonstrates non-equivalence of MA-g-PE/PP and fatty acid. Referring to the data in Table 4, Applicants note that MB-1 comprising Powder 1 (1:1 palmitic acid and stearic acid, 1 part) has poor mechanical properties and good workability, whereas MB-3 comprising Powder 3 (maleic anhydride grafted PE, 2 parts) has poor workability and good mechanical properties. Applicants conclude that Raper’s fatty acids and maleic anhydride grafted PE are not equivalent alternatives.
In response, as an initial matter, Rejection 1 above relies on selecting only Raper’s maleic anhydride grafted polyethylene/polypropylene as the hydrophobizing agent, in combination with Rentsch’s mono-substituted succinic anhydride. This combination does not rely on the equivalency argument. However, the alternative Rejection 2 relies on the Raper’s maleic anhydride grafted polyethylene/polypropylene and fatty acids/reaction products/mixtures, as being equivalent.
Referring to the data in Table 1 of the specification and Table 4 of the Declaration, it is noted that Powder 1 (1 part) provides for different properties when compared to Powder 3 (2 parts). Thus, the comparison of properties of Powder 1 against Powder 3 is not proper back-to-back comparison given that the amounts and the type of the additive are varied simultaneously. Even so, this comparison may only establish that a 1:1 mixture of palmitic acid and stearic acid is not equivalent to a maleic anhydride-grafted PE that is involved in the example, and not the non-equivalence of the overlapping hydrophobizing agents that read on claimed b) ii.
Applicants argue that claim 1 is non-obvious over Raper- Rentsch combination, and that the combination of hydrophobizing agent and maleic anhydride grafted polyethylene/polypropylene provides for unexpected results. Referring to MB-6 comprising a treated filler (powder 5) comprising a MA-g-PE/PP and hydrophobizing agent, Applicants note that it has good mechanical properties and workability, when compared to MB-3, comprising only MA-g-PE/PP. Applicants further note that a selection of a combination of succinic anhydrides and carboxylic acids provides for Powders 4 and 5 with significant improvements in properties, when compared to MB-3 comprising only MA-g-PE/PP. Applicants conclude that claim 1 is non-obvious over Raper and Rentsch. Referring to data in Table 5, Applicants argue that the mechanical properties in MB-5-MB7 are not negatively impacted compared to MB-3.
In response, it is noted that Powder 3 for MB-3 (comparative) relies of MA-grafted PE3 (2 parts by wt./100 parts by wt. of CaCO3), while Powders 4 and 5 comprise a fatty acid mixture (1:1 palmitic acid and stearic acid, 0.5 part) and MA-grafted PE3 ((2.0 parts), i.e., the amount and the type of additive are varied simultaneously, precluding a proper back-to-back comparison. However, this data on superior workability and mechanical properties obtainable from Powders 4 and 5 or the mechanical properties of MB-5 to MB-7 are representative of a treated filler of limited scope. More importantly, the rejections herein above rely on mono-substituted succinic anhydride, alone or a combination of mono-substituted succinic anhydride with fatty acids/reaction products/mixtures.
Applicants argue that the exemplified hydrophobizing agents are representative of the claimed hydrophobizing succinic anhydrides and carboxylic acids, because the claimed agents require the acid groups therein to be balanced by a nonpolar group.
In response, it is noted that in Rejection 2 above, a mixture of mono-substituted succinic anhydride(s), in combination with one or more of Raper’s fatty acids/reaction products/mixtures is relied upon as hydrophobizing agent while in Rejection 1 above, Rentsch’s mono-substituted succinic anhydride alone is relied upon as the hydrophobizing agent. Given that Rentsch teaches as wide variety of mono-substituted succinic anhydrides [0109]-[0130], it is not clear why the specific species of succinic anhydride (ASA of Powder 6) would be considered reasonably representative of the recitation “succinic anhydrides or reaction products thereof”.
In light of above, Examiner maintains that the data on record is not reasonably commensurate in scope with the claim language to overcome the applied art.
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 Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. 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.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
Prosecution Insights