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 .
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.
Claim(s) 1, 5, 7-9, 11, and 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20100298472A1(US’472),
Regarding claims 1, 5, and 7-8, US’472 discloses a granulate is preferable consisting of 15 to 40% by weight of pigment, 45 to 75% by weight of acrylic resin , up to 20% by weight of mineral reinforcing fillers (extenders such as barium sulfate) and 0.1 to 10% by weight of additives. “Acrylic resin” is mainly understood as meaning a water soluble poly addition product of styrene, maleic anydride, methyl meta acrylic monomers and acrylic monomers, including acid and ester and also containing hydroxy (propyl) function. Examples of acrylic resins are, for example, the products distributed by Joncryl Polymers such as: Joncryl® 67 and 690; Joncryl® 586,611 and 678; Styrene Maleic Anydride copolymers distributed by Sartomer such as SMA® 1000,2000 and 3000 and their esters SMA® 1440, 17352, 2625 and 3840. See examples 1-6, [0039], [0030] and [0044-0045].
Although US’472 discloses that the filler amount is preferably up to 20 %, it teaches that the composition of the present invention may contain reinforcing fillers (preferably of mineral origin) and/or additives in amounts comprised of between 10 to 35% by weight of the composition, preferably from 20 to 30% by weight. Thus, the filler amount can be more than 20 % or more than 25%. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, a reference is not limited to the teaching in its preferred embodiment (A reference is good not only for what it teaches but also for what one of ordinary skill might reasonably infer from the teachings. In re Opprecht 12 USPQ 2d 1235, 1236 (CAFC 1989); In re Bode USPQ 12; In re Lamberti 192 USPQ 278; In re Bozek 163 USPQ 545, 549 (CCPA 1969); In re Van Mater 144 USPQ 421; In re Jacoby 135 USPQ 317; In re LeGrice 133 USPQ 365; In re Preda 159 USPQ 342 (CCPA 1968). In addition, "A reference can be used for all it realistically teaches and is not limited to the disclosure in its preferred embodiments" See In re Van Marter, 144 USPQ 421).
The composition may be in the form of granules. The granules may have a length of between 0.2 and 8.8 mm and diameter of between 0.4 and 2.2 mm, preferably a length of between 1.8 and 2.2 mm and diameter of between 1.0 and 1.8 mm. See [0049]. The diameter and the length can be same. Thus, it would be obvious to use the spherical granules since they have a constant or nearly constant particle size in all or almost all directions.
The reference differs from Applicant's recitations of claims by not disclosing
identical ranges. However, the reference discloses "overlapping" ranges, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
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). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 9, The composition in question may be in the form of granules. The granules may have a length of between 0.2 and 8.8 mm and diameter of between 0.4 and 2.2 mm, preferably a length of between 1.8 and 2.2 mm and diameter of between 1.0 and 1.8 mm. See [0049]. The diameter and the length can be same. Thus, it would be obvious to use the spherical granules since they have a constant or nearly constant particle size in all or almost all directions.
Regarding claim 11, 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). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.
Regarding claim 13, US’ 472discloses the using of the pigments. See [0053-0068].
Regarding claim 14, the granulate comprises additives like dispersants, surfactants, wetting agents, antisettling and mixotrophic agents. See [0041].
Regarding claim 15, US’ 472 discloses no preservatives.
Response to Arguments
Applicant's arguments filed 09/09/2025 have been fully considered but they are not persuasive.
The applicant argues that Bardelli (US’472) discloses manufacturing processes for preparing powders, flakes, and granules, none of which generate a granulate that is substantially spherical as required by amended claim 1. One aspect of the Bardelli disclosure describes flake or powder formation from a manufacturing process that involves melt extrusion followed by cooling and cutting or grinding. Another aspect of the Bardelli disclosure describes granulation of the molten extrudate to form a granulate that is cylindrical rather than substantially spherical.
The Examiner respectfully submits the composition may be in the form of granules. The granules may have a length of between 0.2 and 8.8 mm and diameter of between 0.4 and 2.2 mm, preferably a length of between 1.8 and 2.2 mm and diameter of between 1.0 and 1.8 mm. See [0049]. The diameter and the length can be same. Thus, it would be obvious to use the spherical granules since they have a constant or nearly constant particle size in all or almost all directions.
The applicant argues that the instant specification describes the formation of a granulate via spray granulation in a fluidized bed reactor. See p. 9, lines 6-20 of the specification as originally filed. Such a process produces the recited substantially spherical shape by forming material in layers around a core and is fundamentally different from the Bardelli processes
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (the formation of a granulate via spray granulation in a fluidized bed reactor) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The Applicant argues that the substantially spherical configuration of the claimed granulate exhibits unexpectedly advantageous properties. The spherical shape maximizes this unexpected benefit by creating uniform interstitial spaces (cavities) for optimal water flow, preventing clumping and ensuring rapid, easy, and homogeneous mixing for an end-user.
The Examiner respectfully submits that the prior art discloses that the granules may have a length of between 0.2 and 8.8 mm and diameter of between 0.4 and 2.2 mm, preferably a length of between 1.8 and 2.2 mm and diameter of between 1.0 and 1.8 mm. Thus, the prior art’s granules has the advantageous properties being granulate. As for the spherical shape advantage, the Examiner respectfully submits that the applicant must compare the instant application with the closest art. Evidence of unexpected results must be commensurate in scope with the subject matter claimed. In re Linder 173 USPQ 356. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside (i.e. as well as the upper and lower limits) the claimed range to show the criticality of the claimed range. In re Hill 284 F.2d 955, 128 USPQ 197 (CCPA 1960). Furthermore any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merk & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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.
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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731