DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/15/26 has been entered.
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 5/15/26, claims 1, 7, 8, 10-12, 15-19, 24, 27-34 are pending in the application, with claims 11, 12, 15-19, 34 being withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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, 7, 8, 10, 24, 28-30, 33 are rejected under 35 U.S.C. 103 as being unpatentable over Yaniv (EP 0866730 B1), in view of Rentsch et al. (US 20150240056 A1, of record), as evidenced by https://www.sushengpolymer.com/media/pdf/apLu35_Epolene-E-43.pdf.
Regarding claim 1, 28, 33, Yaniv teaches production of coated inorganic powders for use in adhesives, paints, plastics and rubbers. The coated powder particles are formed by coating a solid with a coating material, such as wax, by dissolving it in a carboxylic acid or an anhydride or a halide thereof (a carrier), to form a polymer solution, and chemically or physically modifying the solution to form a coating (Ab., [0001]-[0003], [0027-[0029], [0034]-[0037], ref. claims).
Disclosed solids include fine particles in free flowing powder form, e.g., calcium carbonate [0004]-[0008]. Disclosed coating material for being dissolved includes grafted copolymers of polyolefins and ethylene maleic-acid copolymers ([0027], ref. claim 5).
In disclosed Example 4, Test #18, 400g of calcium carbonate powder (d50=50 microns) is treated with 3g of palmitic acid (FA-7) and 1g of a polymer (Epolene wax E-43). The ratio of palmitic acid to wax falls within the range of 4:1 to 1:4, and the wt% amount of palmitic acid and polymer (wax) falls within the wt.% range recited for the treatment layer. Per evidence link, Epolene® E-43 is a maleic anhydride grafted polypropylene having an acid value of 45 and a melt viscosity (190oC) of 300 mPa.s.
Yaniv is silent on a calcium carbonate filler material having (1) a d98 of <40 mm, (2) a coating material comprising a maleic anhydride polyethylene wax, (3) a coating material comprising a combination of palmitic acid and stearic acid, and a (4) moisture pick-up susceptibility and basic flowablility energy feature as claimed.
At the outset, it is noted that in the case where the claimed ranges "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). See MPEP § 2144.05.
Regarding (1), although Yaniv is silent on d98, a skilled artisan would recognize this feature to depend on the end user requirement. Noting that Yaniv teaches use of coated inorganic powders in in adhesives, paints, plastics and rubbers, in a related field of endeavor, the secondary reference to Rentsch teaches surface-treated filler material, e.g., calcium carbonate, for use of in plastics, paints, adhesives etc. (Ab., [0058]-[0064], ref. claims). Disclosed calcium carbonate filer material has a d98 <15µm and falls within the claimed range [0059]. Thus, It would be obvious to a skilled artisan to surface treat calcium carbonate particles of d98 <15µm by Yaniv’s method. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)).
Regarding (2), although Yaniv does not explicitly teach maleic anhydride-grafted polyethylene wax, given the teaching that waxes may be based on grafted copolymers of polyolefins and ethylene maleic-acid copolymers, and on the specific species-maleic anhydride-grafted polypropylene wax, a skilled artisan would readily recognize that maleic anhydride-grafted polyethylene wax to be a suitable in Yaniv’s compositions.
Regarding (3), although Yaniv is silent on a mixture of stearic acid and palmitic acid as claimed, Yaniv teaches dissolving a polymer (wax) in palmitic acid (Example 4). Stearic acid and palmitic acid are homologs - compounds differing regularly by the successive addition of the same chemical groups, in the present instance, a -CH2- group. Homologs “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Additionally, Yaniv describe similarities in utility of prior art acid and claimed mixture of acids.
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
Additionally, on the basis that compounds that are similar in structure will have similar properties, a skilled artisan would have found it obvious to utilize the disclosed palmitic acid, and a homolog thereof, e.g., stearic acid, for e.g., in a 1:1 weight ratio, absent evidence to the contrary. The obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Thus, given the teaching in Rentsch on calcium carbonate filler material having a d98 <15µm, and the teaching in Yaniv on inorganic filler powders, suitable polymers (waxes) and carboxylic acid for coating the filler material, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare coated calcium carbonate particles having a d98 as claimed, wherein the coating comprises maleic anhydride grafted polyethylene wax and a carboxylic acid in amounts within the scope of the claimed invention.
Regarding the properties recited in claim 1, a skilled artisan would reasonably expect the coated calcium carbonate particles of overlapping scope comprising the same components as in claim 1 to have the claimed moisture pick-up susceptibility and basic flowability energy on the basis that materials and their properties are inseparable, absent evidence to the contrary.
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). MPEP 2112.01(l). Since PTO cannot conduct experiments, the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Regarding claims 7, 8, 10, Yaniv teaches that grinding, milling and precipitation are known methods for size reduction [0005]-[0008], and a calcium carbonate powder d50 particle size of 5 microns for forming coated powder [0073], [0074]. Additionally, Rentsch teaches surface treated powder having a d50, and claimed features b) and c) [0059]-[0063].
Regarding claim 24, Yaniv teaches the powders as having improved performance and compatibility with other materials, e.g., plastics, and forming a coating solution by dissolving polymers (e.g., wax) in a carboxylic acid [0062]. Table 1 teaches a wt.% proportion of polymer/grease/wax in the mixture as ranging from 30-60% (Table 1). It would have been within the level of ordinary skill in the art to form a coating solution from maleic anhydride grafted polyethylene wax and appropriately effective amount of a mixture of palmitic acid and stearic acid capable of dissolving the wax to provide for powders with optimal properties, including components in amounts that fall within the claimed ratio, absent evidence to the contrary.
Regarding claims 29 and 30, coated calcium carbonate particles in Yaniv’s Example 4, Test # 18 are formed from maleic anhydride-grafted polypropylene wax (Epolene® E-43) having an acid value of 45. Thus, it would have been obvious to utilize maleic anhydride-grafted polyethylene wax having an acid value of 45 with a reasonable expectation of success.
Claims 31 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Yaniv (EP 0866730 B1), in view of Rentsch et al. (US 20150240056 A1, of record) and Hohner et al. (US 2005/0014866 A1), as evidenced by https://www.sushengpolymer.com/media/pdf/apLu35_Epolene-E-43.pdf.
The discussions on Yaniv and Renstch from preceding paragraphs as applied to claims 1 and 24 are incorporated herein by reference.
Although Yaniv and Rentsch are silent on the viscosity of the wax as claimed, Yaniv teaches that the choice of waxes is within the scope of skilled person [0039]. Additionally, the secondary reference to Hohner is in a related field of endeavor and teaches use of waxes, e.g., polar-modified polyolefin waxes, for modifying fillers such as calcium carbonate (Ab., [0020], [0027], [0035]-[0036]). Disclosed Examples are drawn to coated chalks formed from maleic anhydride-grafted polypropylene wax having a melt viscosity (at 140oC), of 300 MPa.s (Table 1). Hohner teaches wax-coated fillers do not reduce the efficiency of the additives present in the plastics molding composition [0037]-[0040].
Given the teaching in Hohner that wax-coated fillers do not reduce the efficiency of the additives present in the plastics molding composition [0037]-[0040], and on suitable viscosity of a polyolefin wax for forming coated calcium carbonate, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to utilize a maleic anhydride-grafted polyethylene wax having a melt viscosity as in the claimed invention, absent evidence to criticality for the claimed range.
Claims 1, 7, 8, 10, 24, 27, 29-33 are rejected under 35 U.S.C. 103 as being unpatentable over Raper et al. (US 2013/0000518 A1, of record), in view of Rentsch et al. (US 20150240056 A1, of record) and Hohner et al. (US 2005/0014866 A1).
Regarding claims 1, 24 and 27, 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 or maleic anhydride-grafted polypropylene, said hydrophobizing agent being used in an amount of 0.1 to 10 wt.% of the mineral (Ab., [0030], [0034], [0046]-[0047], ref. claims).
Raper is silent on a calcium carbonate having claimed d98, comprising a treatment layer comprising a maleic anhydride grafted polyethylene wax and a hydrophobizing agent as claimed, and having claimed properties.
As stated in paragraph 7 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists
In a related field of endeavor, the secondary reference to Rentsch 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 anhydrides include hexadecanyl succinic anhydride, octadecanyl succinic anhydride, hexadecenyl succinic anhydride(s), octadecenyl succinic anhydride(s) (read on hydrophobizing agent) [0077]-[0078], and disclosed surface treated filler material has a d98 <15m [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, and 0.1 to 3 wt.% of hexadecanyl succinic anhydride, octadecanyl succinic anhydride, hexadecenyl succinic anhydride(s) and/or octadecenyl succinic anhydride(s), based on the wt. of the filler, including in an amount within the claimed wt.% range and weight ratio range.
Although Raper and Rentsch are silent on a maleic anhydride-grafted polyethylene wax, in a related field, the secondary reference to Hohner teaches use of waxes, e.g., polar-modified polyolefin waxes, as modifiers for fillers, e.g., calcium carbonate (Ab., [0020], [0027], [0035]-[0036]). Disclosed Examples are drawn to coated chalks formed from maleic anhydride-grafted polypropylene wax (Table 1). Hohner teaches that wax-coated fillers do not reduce the efficiency of the additives present in the plastics molding composition [0037]-[0040].
Given the teaching in Hohner on advantages of polar-modified polyolefin waxes, the advantages of mono-substituted succinic anhydrides, and the teaching in Raper on maleic anhydride-grafted polyethylene as a hydrophobizing agent, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to utilize maleic anhydride-grafted polyethylene wax in carbonation with mono-substituted succinic anhydrides to provide for the combined advantages of the coating on calcium carbonate, including those of the claimed invention.
Regarding claims 7 and 10, Raper and Rentsch teach calcium carbonate in ground/powdered form, such as from marble, limestone, dolomite, chalk etc. (Raper- [0034], Rentsch- [0090]-[0091]).
Regarding claim 8, Rentsch teaches calcium carbonate filler particles having properties within the claimed ranges as providing for the disclosed advantages [0033]-[0043].
Regarding claims 28-33, Hohner teaches a wax of 300 MPa.s (at 140oC), and an acid value of 30 or 60 as being suitable for coating chalk (Table 1).
Response to Arguments
In view of the amendment dated 5/15/26, the rejections of record are withdrawn, and new grounds of rejections are presented. Applicant’s arguments and the Affidavit dated 5/15/26 have been duly considered. Although the arguments on the rejections of record are moot, arguments of unexpected results would be pertinent to the rejections above and are addressed below.
Applicant’s arguments focus on the data on record as being evidence of nonobviousness. Referring to the data in the Declaration, Applicant argues that treatment of calcium carbonate with MA-grafted PE and hydrophobizing agent provides for improved flowability and lower moisture pick-up susceptibility, compared to treatment with MA-grafted PE alone, that same reasoning applies with succinic anhydrides and that hexadecanyl succinic anhydride, octadecanyl succinic anhydride, hexadecenyl succinic anhydride(s) and/or octadecenyl succinic anhydride(s) differ only by two carbon atoms and are expected to exhibit similar behavior.
In response, it is noted that the comparisons in the specification may be made over properties of FA2/FA3 alone (palmitic acid and stearic acid mixture, 1:1 ratio, Powder 1) and ASA 1 alone (powder 3). Per instant disclosure, ASA 1 corresponds to CAS No. 68784-12-3, a blend of branched octadecenyl succinic anhydrides (CAS #28777-98-2) (more than 80%) and branched hexadecenyl succinic anhydrides (CAS #32072-96-1), with a residual olefin content is below 3 wt%. Powder 13 and 18 (using MA-grafted PE alone) shows higher moisture pick- susceptibility and, and higher BFE values. However, the prior art to Yaniv (relied herein above) teaches a combination of a MA-grafted polyolefin was and palmitic acid, and therefore, the comparisons on record are not deemed adequate. Additionally, noting that Rentsch teaches the claimed succinic anhydride species, the data on record relies on one specific combination of succinic anhydride compounds (ASA1) and MA-grafted PE. Thus, Applicant’s data on asserted unexpected results is of limited scope and not reasonably representative of claim 1.
Conclusion
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
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