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Claims 1-14 and 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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.
The newly added element on 5/11/26 is repetitive to the added element on 2/24/26 about formation of the dynamic layer. Such a limitation is only what happens in the process [emphasis,] 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)
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)
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.
The Shorr reference (see abstract and [0030]) is added evidence for the formation of the dynamic layer.
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 5/11/26 have been fully considered but they are not persuasive.
Argument, different objective: the rejection is under anticipation, the alternate obviousness being only about the particle size range. And the objective in JP appears to be the same as that of applicant’s – precipitation by CO2, etc. Formation of the dynamic payer is inherent in membrane filtration as established in the rejection.
Argument, different mechanism: the particle sizes in JP are controlled to “the minimum particle size of calcium carbonate in the reaction solution is controlled to be larger than the average pore size of the filtration membrane by utilizing this crystallization effect.” Thus there is no teaching that the particle sizes are uncontrolled or large beyond what applicant claims, or there is an uncontrolled growth as implied in the arguments.
The arguments traversing the inherency rejection of the dynamic layer are not put forth with any supporting evidence. These arguments are also not commensurate in scope with the claims.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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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