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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 19, 2025 has been entered.
Claims 1-5, 7, 8-17 and 20 are pending. Claims 18-19 were previously cancelled. Claims 6 and 21 are cancelled in the present amendment. Claims 8-17 are withdrawn from further consideration as being drawn to nonelected inventions. Claims 1-2 and withdrawn claims 10, 12 and 14-17 are currently amended.
The rejection of claim 2 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph is withdrawn in view of Applicant’s amendment.
Claims 1-5 stand provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 17/605,160 for the reasons set forth in the previous office action.
Claim Rejections - 35 USC § 112
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The limitation “a d98 (vol) in the range from 2 to 150 µm” in claim 3, line 6 (last line) does not further limit the subject matter in claim 1 to which this claim is dependent upon which recites “d98 (vol) in the range from 6 to 80 µm” (see last line). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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, 5, 7 and 20 stand rejected under 35 U.S.C. 103 as being unpatentable over Pust et al. (US 2012/0076713), hereinafter “Pust.”
Regarding claim 1, Pust teaches a product made from a process, wherein the process comprises treating a material comprised of calcium carbonate and/or magnesium carbonate; combining at least one additive(s) to said material, as a surface treatment; wherein said additive(s) are selected from one or a combination of two or more alkali metal compounds and/or acids and/or alkaline earth metal compounds, or any combination thereof; wherein the alkaline earth metal compounds have a solubility at 25oC. in water of at least 0.5%; and wherein the additive(s) are used in an amount of 0.05 to 5 wt. %, based on the amount of the material to be treated (underlining supplied for emphasis, see claim 35). The term calcium- and/or magnesium carbonate preferably means substances comprising calcium- and/or magnesium carbonate in an amount of more than 85 wt. %, preferably 90 wt. % to 99 wt. %, and most preferred 95 wt. % to 98 wt. % (see paragraph [0018]). The additive treatment could also be a chemical reaction occurring between the additive and the material on the basis of calcium and/or magnesium carbonate; this reaction occurs likely at the surface of the particles of the material (i.e., surface reaction) on the basis of calcium and/or magnesium carbonate (see paragraph [0023]). Some of the particularly preferred additives include sulfuric acid, sodium sulfate and sodium carbonate (see paragraph [0032]). Pust also teaches that there is a connection between the primary particle size of the calcium- and/or magnesium carbonate used and their decrepitation tendency; in particular dolomite and limestone particles having a critical primary particle size of less than 1 mm (i.e., 1,000 µm) show an increased decrepitation tendency, and even higher decrepitation tendencies may be observed in dolomite having a primary particle size of more than 90 µm and less than 600 µm (see paragraph [0008]; see also paragraph [0030]). Pust, however, fails to specifically disclose the magnesium carbonate having a d50(vol) in the range from 1 to 75 µm and a d98(vol) in the range from 6 to 80 µm as recited in claim 1.
Considering that Pust teaches that magnesium carbonate has a critical primary particle size of less than 1 mm (i.e., 1,000 µm) as disclosed in paragraph [0008], the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549; In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
Regarding claim 5, Pust teaches the features as discussed above. As discussed above, Pust teaches that the material to be treated is comprised of calcium carbonate and/or magnesium carbonate (see claim 35), i.e., calcium carbonate, magnesium carbonate or a combination of calcium carbonate and magnesium carbonate. Pust, however, fails to specifically disclose the magnesium carbonate containing up to 25,000 ppm Ca2+ ions.
Considering that Pust teaches that the material to be treated can be magnesium carbonate, by itself, and that “up to” includes “zero” as a lower limit (see In re Mochel, 470 F.2d 638, 176 USPQ 194 (CCPA 1974)), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the magnesium carbonate of Pust to not contain any Ca2+ ions.
Regarding claim 7, Pust teaches the features as discussed above. Even though Pust does not explicitly disclose the surface-treated or surface-reacted magnesium carbonate as a carrier for the release of one or more active agents(s) in a home care formulation, rather for the manufacture of glass (see abstract in Pust), the two different intended uses are not distinguishable in terms of the composition, see In re Thuau, 57 USPQ 324; Ex parte Douros, 163 USPQ 667; and In re Craige, 89 USPQ 393.
Regarding claim 20, Pust teaches the features as discussed above. As discussed above, the term calcium- and/or magnesium carbonate preferably means substances comprising calcium- and/or magnesium carbonate in an amount of more than 85 wt. %, preferably 90 wt. % to 99 wt. %, and most preferred 95 wt. % to 98 wt. % (see paragraph [0018]). Pust, however, fails to specifically disclose the magnesium carbonate comprising less than 15 wt% calcium carbonate based on total dry weight of the surface-reacted magnesium carbonate.
Considering that Pust teaches that the term calcium- and/or magnesium carbonate preferably means substances comprising magnesium carbonate in an amount of more than 85 wt. %, preferably 90 wt. % to 99 wt. %, and most preferred 95 wt. % to 98 wt. %, it follows that the remaining calcium carbonate is preferably 1 to 10 wt%.
Claim 2 stands rejected under 35 U.S.C. 103 as being unpatentable over Pust, as applied to claims 1, 5, 7 and 20 above, and further in view of Bown et al. (US 2011/0147682), hereinafter “Bown.”
Regarding claim 2, Pust teaches the features as discussed above. Pust, however, fails to disclose magnesite or hydromagnesite.
Bown, an analogous art, teaches the equivalency of dolomite with magnesite or hydromagnesite as suitable sources of magnesium carbonate (see paragraph [0018]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the dolomite of Pust with magnesite or hydromagnesite because the substitution of art recognized equivalents as shown by Bown is within the level of ordinary skill in the art. In addition, the substitution of one magnesium carbonate source for another is likely to be obvious when it does no more than yield predictable results.
Claims 3-4 stand rejected under 35 U.S.C. 103 as being unpatentable over Pust, as applied to claims 1, 5, 7 and 20 above, and further in view of Morifuji (EP 0,460,923 A2).
Regarding claims 3-4, Pust teaches the features as discussed above. Pust, however, fails to disclose the magnesium carbonate having a BET specific surface area in the range from 10 to 100 m2/g, and/or an intra-particle intruded specific pore volume in the range from 0.9 to 2.3 cm3/g, and/or a d50 (vol) in the range from 1 to 75 µm as recited in claim 3; and wherein the magnesium carbonate has a ratio of intra-particle intruded specific pore volume to BET specific surface area of more than 0.01 cm3/m2 as recited in claim 4.
Morifuji, an analogous art, teaches that a basic magnesium carbonate has an average size (i.e., d50) of 1 to 50 µm and a specific surface area of 10 to 70 m2/g (see abstract) and a total pore volume of 0.8 to 1.5 cc/g (see page 4, lines 1-2). In Example 1, Morifuji teaches a basic magnesium carbonate having an average particle size of 6.0 µm, a specific surface area of 22 m2/g, and a total pore volume of 1.16 cc/g (or 1.16 cm3/g) (see page 6, lines 14-25), wherein the ratio of the pore volume to specific surface area is 1.16 cm3/g:22 m2/g or 0.05 cm3/m2.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the magnesium carbonate of Pust to have a particle size, specific surface area, specific pore volume, and a ratio of pore volume to specific surface area within those recited because it is known from Morifuji that a typical basic magnesium carbonate has an average size (i.e., d50) of 1 to 50 µm, a specific surface area of 10 to 70 m2/g, a total pore volume of 0.8 to 1.5 cc/g, preferably 1.16 cc/g, and a ratio of pore volume to specific surface area of 0.05 cm3/m2.
Claims 1-3, 5, 7 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Rentsch et al. (WO 2017/121774), hereinafter “Rentsch.”
Regarding claims 1 and 3, Rentsch teaches a surface-treated calcium carbonate-comprising material and/or magnesium carbonate-comprising material as oxygen scavenger; wherein the surface treatment agent is selected from the group consisting of ascorbic acid and/or salts thereof, gallic acid and/or salts thereof, unsaturated fatty acids and/or salts thereof, among others, and mixtures thereof; and wherein the total weight of the surface treatment agent on the total surface area of the at least one calcium carbonate-comprising material and/or magnesium carbonate-comprising material is from 0.01 to 40 mg/m2, based on the at least one calcium carbonate-comprising material and/or magnesium carbonate-comprising material (see abstract). The surface-treatment agent is added in an amount from 0.01 to 80.0 wt%, based on the total dry weight of the calcium-carbonate-comprising material and/or magnesium carbonate-comprising material, preferably from 0.01 to 40.0 wt%, more preferably from 0.1 to 20.0 wt% (see page 38, lines 18-24). The “magnesium carbonate-comprising material” can be a mineral material or a synthetic material having a content of magnesium carbonate of at least 30 wt%, preferably 40 wt%, even more preferably 90 wt%, and most preferably 95 wt%, based on the total dry weight of the magnesium carbonate-comprising material (see page 14, lines 13-19). The surface-treated magnesium carbonate-comprising material is preferably in the form of a particulate material having a weight median particle size d50 value in the range from 0.1 to 7 μm (see page 26, lines 17-25) and may have a top cut (d98) of ≤ 15 μm, or ≤ 12.5 μm, preferably ≤ 10 μm and most preferably ≤ 7.5 μm (see page 26, line 27 to page 27, line 2), which reads on the d98 of instant claims 1 and 3. Rentsch also teaches that the magnesium carbonate-comprising material further comprises at least one hydrophobising agent (see page 27, lines 25 to page 28, line 16), and one example is an aliphatic carboxylic acid having a total amount of carbon atoms from C4 to C24 and/or reaction products thereof (see page 28, lines 18-22) like butanoic acid, pentanoic acid and hexanoic acid (see page 29, lines 12-19). The surface-treated magnesium carbonate-comprising material further comprises the at least one hydrophobising agent, which at least partially covers the surface-treated magnesium carbonate-comprising material, wherein the total weight of the at least one hydrophobising agent on the total surface area of the surface-treated magnesium carbonate-comprising material is from 0.001 to 10 mg/m2, preferably from 0.001 to 9 mg/m2, more preferably from 0.01 to 8 mg/ m2, and most preferably from 0.1 to 4 mg/ m2, based on the magnesium carbonate-comprising material (see page 31, lines 12-22). Rentsch, however, fails to specifically disclose the magnesium carbonate-comprising material surface-reacted with a carboxylic acid like butanoic acid, pentanoic acid or hexanoic acid, the amount of the carboxylic acid based on the total weight of the magnesium carbonate, and the d50 value in the range from 1 to 75 μm as recited in claim 1; and a d50 value in the range from 1.5 to 30 μm as recited in claim 13.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a hydrophobising agent like butanoic acid, pentanoic acid or hexanoic acid on the surface-treated magnesium carbonate-comprising material, say for example magnesium carbonate surface treated with ascorbic acid (i.e., magnesium carbonate whose surface comprises magnesium ascorbate), because these are some of the selection of hydrophobising agents which at least partially covers the surface-treated magnesium carbonate-comprising material as taught by Rentsch. It would also have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the butanoic acid, pentanoic acid or hexanoic acid to surface react on the surface-treated magnesium carbonate-comprising material resulting in for example, magnesium carbonate whose outermost surface comprises magnesium butanoate, magnesium pentanoate or magnesium hexanoate.
With respect to the amount of the carboxylic acid, it is noted that the total weight of the surface treatment agent on the total surface area of the magnesium carbonate-comprising material is from 0.01 to 40 mg/m2, based on the magnesium carbonate-comprising material (see abstract), and the equivalent amount of the surface-treatment agent is from 0.01 to 80.0 wt%, based on the total dry weight of the magnesium carbonate-comprising material, preferably from 0.01 to 40.0 wt% (see page 38, lines 18-24). Even though Rentsch does not explicitly disclose the amount of the carboxylic acid based on the total weight of the magnesium carbonate, rather the total weight of the at least one hydrophobising agent, i.e., carboxylic acid, on the total surface area of the surface-treated magnesium carbonate-comprising material which is from 0.001 to 10 mg/m2, given the premise above on the total weight of the surface treatment agent on the total surface area of the magnesium carbonate and the equivalent amount of the surface-treatment agent on the total dry weight of the magnesium carbonate , it follows that the total weight of the at least one hydrophobising agent, i.e., carboxylic acid, on the total surface area of the surface-treated magnesium carbonate-comprising material from 0.001 to 10 mg/m2 is equivalent to about 0.001 to 10 wt% amount of the carboxylic acid based on the total dry weight of the magnesium carbonate, hence, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549; In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
With respect to the d50 values recited in claims 1 and 3, considering that Rentsch teaches a d50 value in the range from 0.1 to 7 μm, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549; In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
Regarding claim 2, Rentsch teaches the features as discussed above. In addition, Rentsch teaches that the magnesium-carbonate-comprising material includes magnesitic marble (see page 16, lines 1-3).
Regarding claims 5 and 20, Rentsch teaches the features as discussed above. As discussed above, Rentsch teaches a surface-treated calcium carbonate-comprising material and/or magnesium carbonate-comprising material (see abstract). Rentsch, however, fails to specifically disclose the magnesium carbonate containing up to 25,000 ppm Ca2+ ions as recited in claim 5, or less than 15 wt% calcium carbonate as recited in claim 20.
Considering that Rentsch teaches surface-treated magnesium carbonate-comprising material, by itself, and that “up to” or “less than” includes “zero” as a lower limit (see In re Mochel, 470 F.2d 638, 176 USPQ 194 (CCPA 1974)), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the magnesium carbonate of Rentsch to not contain any Ca2+ ions or calcium carbonate.
Regarding claim 7, Rentsch teaches the features as discussed above. Even though Rentsch does not explicitly disclose the surface-treated or surface-reacted magnesium carbonate as a carrier for the release of one or more active agents(s) in a home care formulation, rather as oxygen scavenger (see abstract in Rentsch), the two different intended uses are not distinguishable in terms of the composition, see In re Thuau, 57 USPQ 324; Ex parte Douros, 163 USPQ 667; and In re Craige, 89 USPQ 393.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Rentsch, as applied to claims 1-3, 5, 7 and 20 above, and further in view of Morifuji (EP 0,460,923 A2).
Regarding claim 4, Rentsch teaches the features as discussed above. Rentsch, however, fails to disclose the magnesium carbonate having a ratio of intra-particle intruded specific pore volume to BET specific surface area of more than 0.01 cm3/m2.
Morifuji, an analogous art, teaches that a basic magnesium carbonate has an average size (i.e., d50) of 1 to 50 µm and a specific surface area of 10 to 70 m2/g (see abstract) and a total pore volume of 0.8 to 1.5 cc/g (see page 4, lines 1-2). In Example 1, Morifuji teaches a basic magnesium carbonate having an average particle size of 6.0 µm, a specific surface area of 22 m2/g, and a total pore volume of 1.16 cc/g (or 1.16 cm3/g) (see page 6, lines 14-25), wherein the ratio of the pore volume to specific surface area is 1.16 cm3/g:22 m2/g or 0.05 cm3/m2.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the magnesium carbonate of Rentsch to have a ratio of pore volume to specific surface area within those recited because it is known from Morifuji that a typical basic magnesium carbonate has a ratio of pore volume to specific surface area of 0.05 cm3/m2.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The reference is considered cumulative to or less material than those discussed above.
Response to Arguments
Applicant's arguments filed on June 19, 2025 have been fully considered but they are not persuasive.
With respect to the rejection of claims 1, 5, 7 and 20 under 35 U.S.C. 103 as being unpatentable over Pust, Applicant argues that Pust does not teach a surface-reacted magnesium carbonate with (i) a d50 (vol) in the range from 1 to 75 µm or (ii) a d98 (vol) in the range from 6 to 80 µm, rather Pust teaches that the surface-treated dolomite taught (with the goal of reducing decrepitation tendency during glass formation) has a primary particle size between 90 to 500 µm, which is outside the claimed range in claim 1.
The examiner respectfully disagrees with the above arguments because, as stated in paragraph 8 above, even though Pust teaches that even higher decrepitation tendencies may be observed in dolomite having a primary particle size of more than 90 µm and less than 600 µm, Pust also teaches that particles having a critical primary particle size of less than 1 mm (less than 1,000 microns) show an increased decrepitation tendency as disclosed in paragraph [000]. Hence, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549; In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I). In addition, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
With respect to the rejection of claim 2 over Pust in view of Bown, and claims 3-4 over Pust in view of Morifuji, Applicant argues that the claims are not obvious over Pust for at least the reasons presented above with respect to independent claim 1.
The above reasoning over Pust apply here as well.
With respect to the provisional nonstatutory double patenting rejection over copending Application 17/605,160, Applicant requests the provisional double patenting rejection be held in abeyance pending allowance of the final claim(s).
The provisional nonstatutory double patenting rejection over copending Application 17/605,160 is maintained until such time Applicant submits a timely filed terminal disclaimer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORNA M DOUYON whose telephone number is (571)272-1313. The examiner can normally be reached Mondays-Fridays; 8:00 AM-4:30 PM.
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/LORNA M DOUYON/Primary Examiner, Art Unit 1761