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 .
Election/Restrictions
Claims 1-14 and 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/27/25.
Claims 15 and 16 are being examined.
Claim Rejections - 35 USC § 102/103
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.
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.
Claim(s) 15 and 16 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP 2017-136570A, with further evidence from Shorr et al (US 2002/0046974)
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This JP reference teaches (abstract) the claimed invention of charging calcium carbonate particles of size larger than the pore size of the membrane as seed crystals [0077] and subsequently having calcium carbonate precipitate in the solution by carbonating and adjusting pH. See [0017], fig. 1 and [0030], and Fig. 7, and [0092] and down. The 1.1 micron or more particle size spans the microfine particles of claim 15. Additionally, JP teaches that the particle sizes are being in a normal distribution and describes the statistical details in [0062]-[0066], which includes the mean values (like d-50 and the fringe values (like d-10 and d-90.) It is also noted that even though applicant recites the particle size distribution data, they are in reality recited in a wide range (like d-50 being less than or equal to 1 micron, etc.) Thus the claims are anticipated, or at the least made obvious by this reference if the particle size range in this reference were to be observed as not an exact match.
The amended claims (8/22/25) recite detailed particle size distribution, having two distributions, ultrafine and microfine, and BET surface area. Since applicant’s process requires these to be made in-situ, and since the reference teaches the same in-situ process of adding an alkali and carbon dioxide to precipitate carbonate particles [0018], the particle size distribution and surface area also would have been inherently the same.
Regarding the newly added element (2/24/26) about formation of the dynamic layer, such a limitation is only what happened in the process, and not an actual, tangible, process step. And this would happen inherently in the JP process as well.
MPEP 2112. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004),
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) (rejecting the contention that inherent anticipation requires recognition by a person of ordinary skill in the art before the critical date and allowing expert testimony with respect to post-critical date clinical trials to show inherency); see also Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004) ("[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention."); Abbott Labs v. Geneva Pharms., Inc., 182 F.3d 1315, 1319, 51 USPQ2d 1307, 1310 (Fed. Cir. 1999)
In the instant claims, the recited properties of the mineral particles would have been inherently the same since they are similarly formed, in-situ, in the reference. The dynamic nature of the layer is also inherent, because the reference teaches the same process.
Allowable Subject Matter
Claim 15 can be made allowable by merging with claim 16 and adding the element, “by introducing gaseous carbon dioxide to a milk of calcium/magnesium hydrates under controlled conditions to obtain the final calcium and/or magnesium particles.” JP adds calcium carbonate crystals for start-up and then provides calcium/magnesium source for precipitation from the feed water itself. Therefore, adding lime or milk of magnesia in the water to generate the carbonates is unobvious over JP.
Response to Arguments
Applicant's arguments filed 2/24/26 have been fully considered but they are not persuasive.
Argument: applicant deliberately adds calcium as an exogenous pre-engineered additive: so does the reference, as calcium carbonate particles of certain size. Regarding “applicant does not search to remove calcium from water …” – this is not an element of the claims, but it happens, irrespective.
Argument: uses hydraulic pressure to form and maintain a layer: this would happen in the reference as well, irrespective of whether the reference has identified it. And that is why the inherency rejection. Applicant has not provided any evidence that such layer would not form in the teaching of JP. Contrary to the argument, formation of the cake layer in the reference would be more pronounced because of the recirculation.
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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
Examiner has in fact considered all these possibilities, before suggesting the amendment for making the claims in condition for allowance, and considering the fact that the JP reference adds seed crystals only for startup, whereas applicant adds lime continuously. Further evidence that a dynamic layer is formed on the membrane is provided by Shorr et al, US 2002/0046974, at [0030].
Regarding the BET surface area, and combining specifically designed particles: this is an unpersuasive argument, because applicant does not add specifically designed particles, whereas the reference does. Applicant adds lime and then sparges carbon dioxide. The particle sizes and surface areas of the resulting particles would be inherent in the reference as well, because the particles in the reference are also dynamically formed in situ.
By the authority of the cited case laws, Id., the onus is on the applicant to prove otherwise.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISHNAN S MENON whose telephone number is (571)272-1143. The examiner can normally be reached Flexible, but generally Monday-Friday: 8:00AM-4:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem C Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISHNAN S MENON/Primary Examiner, Art Unit 1777
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