DETAILED ACTION
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 .
Response to Arguments
Applicant’s arguments, see Page 9, lines 1-5 of Remarks, filed January 5th, 2026, with respect to the rejection of claims 1, 3, and 16-18 under 35 U.S.C. 103 have been fully considered and are persuasive. Because the allowable subject matter of claims 4/19 has been incorporated into the independent claim 1, the rejection has been withdrawn in consideration of the elected species (phosphoric acid and hydromagnesite) therein. However, upon extending examination to the non-elected species in claim 1, new grounds of rejection are made in view of the prior art.
Applicant’s request for rejoinder is currently denied as unripe.
Election/Restrictions
The Office Action dated October 3rd, 2025 indicated allowable subject matter in dependent claims 4, 6 and 19 as presented on July 15th, 2025 for the elected species “phosphoric acid” and “hydromagnesite (Mg5(CO3)4(OH)2•4H2O)”. In accordance with MPEP 803.02, examination was extended to the non-elected species, and search and examination was continued until prior art was found that anticipates or renders obvious the species in the Markush group of claim 1. In addition to the previously elected species, the magnesium ion-containing materials “anhydrous magnesium carbonate”, “magnesite (MgCO3)”, and “brucite (Mg(OH)2)” were searched, resulting in the prior art rejections below. No additional searching of surface-treating compounds was required to identify the relevant prior art.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rothon (U.S. Patent No. 5,461,101, 1995), as further evidenced by Michaux (EP 2169027 A1).
Regarding claim 1, Rothon teaches a surface-treated magnesium ion-containing material obtained by treating the surface of a magnesium ion-containing material with a water-insoluble polymer (Rothon, Col. 5, line 40 - Col. 6, line 6 and Col. 7, line 55 - Col. 8, line 22; Table 2, ethylene vinyl acetate (EVA)-treated magnesium hydroxide);
wherein the magnesium ion-containing material is brucite (Mg(OH)2) (Rothon, Table 3, magnesium hydroxide; see below); and
wherein the magnesium ion-containing material prior to surface treatment is in form of particles having a BET specific surface area of 18 m2/g (Rothon, Col. 6, lines 3-5).
Rothon does not explicitly teach that the magnesium hydroxide is brucite (Mg(OH)2). However, Rothon teaches that the magnesium hydroxide is formed by hydration of magnesium oxide (Rothon, Col. 5, lines 48-55). Michaux teaches that magnesium hydroxide formed by hydration of magnesium oxide is in the form of brucite (Mg(OH)2) (Michaux, [0009]). Therefore, despite being silent to the exact form of magnesium hydroxide, Rothon’s magnesium hydroxide would necessarily be brucite (Mg(OH)2).
Rothon does not explicitly teach that the BET surface area is measured using nitrogen according to ISO 9277:2010. However, in the absence of evidence to the contrary, it is presumed that the BET method employed by Rothon would produce results consistent with what would be obtained with ISO 9277:2010 using nitrogen.
Regarding claim 3, Rothon teaches the surface-treated magnesium ion-containing material according to claim 1, as discussed above, wherein the magnesium ion-containing material prior to surface treatment is in form of particles having a volume median grain diameter of 800 nm (Rothon, Col. 6, lines 3-6).
Rothon does not explicitly teach that the d50 value is determined by laser diffraction. However, in the absence of evidence to the contrary, it is presumed that the method of determining d50 employed by Rothon would produce results consistent with what would be obtained via laser diffraction.
Regarding claim 19, Rothon teaches the surface-treated magnesium ion-containing material according to claim 1, as discussed above, wherein the magnesium ion-containing material prior to surface treatment is in form of particles having a BET specific surface area of 18 m2/g (Rothon, Col. 6, lines 3-5; see discussion of claim 1 above regarding ISO standard).
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.
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, 6, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Singh (WO 2017/184952 A1).
Regarding claim 1, Singh teaches a surface-treated inorganic material (Singh, [0047]) obtained by treating the surface of an inorganic material with a compound selected from a list including hexanoic acid (Singh, [0064]);
wherein the inorganic material is selected from a list including anhydrous magnesium carbonate (Singh, [0063], “a carbonate of magnesium” is understood to be anhydrous magnesium carbonate, absent any mention of the magnesium carbonate being hydrated); and
the inorganic material prior to surface treatment is in form of particles having a BET specific surface area of 8 to 20 m2/g (Singh, [0029]; Singh, [0064], “According to extended embodiments of the above methods, the dried inorganic particulate material as described above may be treated with a surface treatment agent to further tailor the surface properties of the inorganic particulate material.” (emphasis added)).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have selected hexanoic acid (a carboxylic acid containing six carbon atoms) as the surface-treating compound and anhydrous magnesium carbonate as the magnesium-ion containing material in Singh. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07. In the instant case, Singh teaches that these materials are suitable as a surface-treating agent and a material to be treated (Singh, [0064] and [0063], respectively), so they would be obvious to select.
Singh does not explicitly teach that the BET surface area is measured using nitrogen according to ISO 9277:2010. However, in the absence of evidence to the contrary, it is presumed that the BET method employed by Singh would produce results consistent with what would be obtained with ISO 9277:2010 using nitrogen.
Regarding claims 3 and 16-18, Singh renders the surface-treated magnesium ion-containing material according to claim 1 obvious, wherein the magnesium ion-containing material prior to surface treatment is in form of particles having
a volume medium grain diameter (d50) of about 0.5 μm to about 2 μm (Singh, [0061]), and
a volume determined top cut particle size (d98) of from about 5 μm to about 20 μm (Singh, [0062]).
Singh does not explicitly teach that the d50 and d98 values are determined by laser diffraction. However, in the absence of evidence to the contrary, it is presumed that the method of determining d50 and d98 employed by Singh would produce results consistent with what would be obtained via laser diffraction.
Regarding claim 6, Singh renders the surface-treated magnesium ion-containing material according to claim 1 obvious, as discussed above, wherein the surface-treated magnesium ion-containing material is obtained by treating the surface of the magnesium ion-containing material with the compound in an amount from 0.1 to 1.0 wt.-%, based on the total dry weight of the magnesium ion-containing material (Singh, [0065]).
Regarding claim 19, Singh renders the surface-treated magnesium ion-containing material according to claim 1 obvious, as discussed above, wherein the magnesium ion-containing material prior to surface treatment is in form of particles having a BET specific surface area in the range from 8 to 20 m2/g (Singh, [0029]). As discussed above for claim 1, it is presumed that the BET specific surface area measurement technique used by Singh would produce results consistent with ISO 9277:2010 with nitrogen.
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, 3, 6, and 16-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 17/605,158 (“’158”, reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-5 of ‘158 overlap in scope with instant claims 1, 3, 6, and 16-19.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736