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 Amendment
This office action is in response to the Amendment filed on 10/22/2025.
Claims 1-12 and 16-21 are presently pending; claims 13-15 are canceled; claims 7-11 are withdrawn; claims 1-2 and 4-5 are amended; claims 16-21 are new; claims 1-6, 12 and 16-21 are under examination.
The objections to the abstract are withdrawn in light of the amendments to the abstract.
The objection to claim 5 is withdrawn in light of the amendments to the claims.
The 35 U.S.C. 102 rejections of claims 1-4, 6 and 12 over TAVAKKOLI and claims 1-6 and 12 over RENTSCH, and the 35 U.S.C. rejection of claim 5 over TAVAKKOLI in view of PARK, are withdrawn in light of the amendments to the claims.
New grounds of rejection are present herein in light of the amendments to the claims.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 1-6, 12 and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Rentsch, et al. (WO-2018/019692-A1) (hereinafter, “RENTSCH”) in view of Mastrangelo (U.S. Pub. No. 2014/0287184-A1) (hereinafter, “MASTRANGELO”), with evidence from Pore Scale Solutions, “SEM Pore Image Analysis” (hereinafter, “PSS”) as to the rejection of claim 5.
Regarding claim 1, RENTSCH teaches a calcium carbonate-containing material (see RENTSCH at Abstract),
wherein the calcium carbonate-containing material comprises natural calcium carbonate (see RENTSCH at pg. 4, lines 26-28, and pg. 15, lines 1-2, teaching natural ground calcium carbonates)
wherein the calcium carbonate-containing material has a weight medium particle size d50 of from 0.5 to 10 μm, and/or a weight top cut particle size d98 of from 2.0 to 40 μm (see RENTSCH at pg. 23, lines 18-24, teaching a d50 of 0.6 to 1.2 μm and a d98 of 2 to 25 μm),
and wherein the calcium carbonate-containing material comprises organic matter in an amount of below 1.5 wt.%, based on the total dry weight of the calcium carbonate-containing material (see RENTSCH at Abstract, pg. 22, lines 19-21, and Tables 1-2, teaching calcium carbonate (an inorganic material) powders, consisting of inorganic minerals, wherein impurities are removed),
and wherein the calcium carbonate-containing material has a brightness from 90 to 100%, according to R457, and/or ii) L* from 95 to 100, according to DIN 6174 (see RENTSCH at pg. 80, line 25 – pg. 81, line 4, and Table 3, teaching R457 brightness values and L* values within these ranges, e.g., a brightness of 95.3% and an L* of 98.5).
RENTSCH fails to explicitly mention that the calcium carbonate containing material is prepared from an avian eggshell; however, this is considered product-by-process claim language and is not given patentable weight. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
RENTSCH fails to explicitly mention that the natural calcium carbonate is of avian eggshell.
However, avian eggshell is a known source of natural ground calcium carbonate in the art. MASTRANGELO teaches a calcium carbonate-containing material (see MASTRANGELO generally at Abstract) wherein chicken egg shells are used as the calcium carbonate containing source (see MASTRANGELO at paragraph [0054]). MASTRANGELO teaches heat treating the egg shells to remove any residual organic matter and then grinding them to provide ground calcium carbonate (see MASTRANGELO at paragraphs [0054]-[0055], [0059]-[0060] and [0066]-[0067]). MASTRANGELO further teaches that poultry egg shells such as chicken egg shells are a renewable source of calcium carbonate providing economic and environmental benefits, and providing several other advantages over conventional mined calcium carbonate sources such as, for example, a lower magnesium content than typical mined calcium carbonate, resulting in purer calcium carbonate material (see MASTRANGELO at paragraphs [0006], [0054] and [0075]-[0076]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the calcium carbonate-containing material of RENTSCH by using the ground chicken egg shells of MASTRANGELO as the natural source of ground calcium carbonate (see RENTSCH at pg. 4, lines 26-28, and pg. 15, lines 1-2; see MASTRANGELO at paragraph [0054]). One of ordinary skill in the art could have used chicken egg shells as the natural source of ground calcium carbonate with a reasonable expectation of success, yielding the predictable result of providing a natural source of calcium carbonate; further, one of ordinary skill in the art would have been motivated to use chicken egg shells for the benefit of providing a renewable calcium carbonate source which provides economic and environmental benefits and has a lower magnesium content than typical mined calcium carbonate as taught by MASTRANGELO (see MASTRANGELO at paragraphs [0006], [0054] and [0075]-[0076]). Further, MASTRANGELO teaches that it is known in the art to use avian eggshells as a calcium carbonate source, and MPEP 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Regarding claim 2, as applied to claim 1 above, RENTSCH in view of MASTRANGELO teaches a calcium-carbonate containing material according to claim 1, wherein the calcium carbonate-containing material has a weight-median particle size d50 of from 1.0 to 7 μm (see RENTSCH at pg. 85, lines 18-19, teaching a d50 of 2.6 μm).
Regarding claims 3 and 20-21, as applied to claim 1 above, RENTSCH in view of MASTRANGELO teaches a calcium-carbonate containing material according to claim 1, wherein the calcium carbonate-containing material has i) a brightness from 93 to 100%, according to R457; ii) L* from 98 to 100, according to DIN 6147; iii) b* from 0 to 10, according to DIN 6147; and iv) y from 0.5 to 5 (see RENTSCH at pg. 81, lines 1-10 and Table 3, teaching values within these ranges, e.g., a brightness of 95.3%, L* of 98.5, b* of 0.77 and y (interpreted as referring to yellowness index) of 1.1).
Regarding claim 4, as applied to claim 1 above, RENTSCH in view of MASTRANGELO teaches a calcium-carbonate containing material according to claim 1, wherein the calcium carbonate-containing material comprises organic matter in an amount of below 1.0 wt.% (see RENTSCH at Abstract and Tables 1-2, teaching calcium carbonate (an inorganic material) powders, consisting of inorganic minerals; see RENTSCH at pg. 22, lines 19-21, teaching removing impurities from the calcium carbonate, i.e., providing pure calcium carbonate, which is inorganic).
Regarding claim 5, as applied to claim 1 above, RENTSCH in view of MASTRANGELO teaches a calcium-carbonate containing material according to claim 1, wherein the calcium carbonate-containing material comprises intra-particle pores having a pore diameter of below 1000 nm (see RENTSCH at pg. 32, lines 12-15, teaching an intra-particle pore size of 0.01 to 0.9 μm, i.e., 10 to 900 nm; the pore size is measured via mercury porosimetry, which can be used to measure the same value (pore diameter) as would be measured by scanning electron microscopy (see PSS at pg. 1); the measurement technique used to determine the pore size is not considered to limit the present product claim, as the calcium carbonate-containing material exhibits the claimed property of a pore diameter below 1000 nm regardless of what method was used to measure the property).
Regarding claim 6, as applied to claim 1 above, RENTSCH in view of MASTRANGELO teaches a calcium-carbonate containing material according to claim 1, wherein the calcium carbonate-containing material is prepared from chicken eggshell (although this limitation is considered product-by-process claim language and is not given patentable weight, see MASTRANGELO at paragraph [0054], teaching chicken eggshell).
Regarding claim 12, as applied to claim 1 above, RENTSCH in view of MASTRANGELO teaches a calcium-carbonate containing material according to claim 1, and further teaches a paint formulation comprising the calcium carbonate-containing material according to claim 1 (see RENTSCH at pg. 7, lines 4-7).
Regarding claims 16-17, as applied to claim 1 above, RENTSCH in view of MASTRANGELO teaches a calcium-carbonate containing material according to claim 1, wherein the calcium carbonate-containing material comprises calcium carbonate of avian eggshell in an amount of from 96.0 to 99.9 wt.%, based on the total dry weight of the calcium carbonate-containing material (see MASTRANGELO at paragraph [0054], teaching chicken egg shell as the calcium carbonate source; see RENTSCH at pg. 14, lines 25-29, teaching a calcium carbonate-comprising material having a content of calcium carbonate of at least 95 wt%; see RENTSCH at pg. 22, lines 19-21, teaching removing impurities from the calcium carbonate, i.e., providing pure calcium carbonate).
Regarding claim 18, as applied to claim 1 above, RENTSCH in view of MASTRANGELO teaches a calcium-carbonate containing material according to claim 1, wherein the calcium carbonate-containing material has a weight top cut particle size d98 overlapping with and thereby rendering obvious the claimed range of from 5.0 to 35 μm (see RENTSCH at pg. 23, lines 18-24, teaching a d98 of 2 to 25 μm). As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 19, as applied to claim 1 above, RENTSCH in view of MASTRANGELO teaches a calcium-carbonate containing material according to claim 1, wherein the calcium carbonate-containing material has a specific surface area overlapping with and thereby rendering obvious the claimed range of from 0.5 to 20 m2/g (see RENTSCH at pg. 12, line 6, teaching 15 to 200 m2/g). As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Response to Arguments
Applicant’s arguments filed 10/22/2025 with respect to claims 1-6 and 12 have been considered but are moot because the arguments do not apply to the new combination of references as set forth in the grounds of rejection above.
Further, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 103 for claims 1-6, 12 and 16-21 over RENTSCH in view of MASTRANGELO as set forth above.
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 extension fee 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 date of this final action.
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/S.C.C./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731