DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/23/2026 has been entered.
Response to Amendment
In response to the amendment received on 03/23/2026:
claims 1-4, 6-21 are currently pending
claims 10-20 are withdrawn from consideration
claims 1, 3, 10, 15 and 19 are amended
claim 21 is added
previously presented prior art grounds of rejection of claims 1-3 and 6-9 as being anticipated by Gane are withdrawn
prior art grounds of rejection addressing newly amended claims based on Ippolito, Gane and Pohl are presented herein
Claim Rejections - 35 USC § 103
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 text of those sections of Title 35 U.S. Code not included in this action can be found in a prior Office Action.
Claims 1-3, 8-9 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Ippolito et al. (US 20180355182 A1), hereinafter referred to as IPPOLITO.
Regarding claim 1, IPPOLITO teaches a composition formed from
a calcium or magnesium carbonate-comprising material selected from among sedimentary ground calcium carbonate, precipitated calcium carbonate precipitated hydromagnesite and mixture thereof, and excluding surface-reacted calcium carbonate (paragraph [0050]: a “calcium carbonate-comprising material” refers to a material which is a source of calcium carbonate and preferably is selected from ground calcium carbonate, precipitated calcium carbonate, dolomite and mixtures thereof), and
from 0.5 to 20 wt.-%, based on the total weight of the calcium or magnesium carbonate-comprising material, of a surface-treatment composition (paragraphs [0041]: the amount of at least one surface treatment agent is in the range from 0.07 to 9 mg surface treatment agent per m2 of the surface area of the calcium carbonate-comprising material; [0038]: the specific surface area of the ground calcium carbonate or a precipitated calcium carbonate is in the range from 1 to 100 m2/g; thus, the surface treatment agent is added in an amount from 0.007% to 90%; IPPOLITO teaches a range which overlaps and renders obvious the claimed range; 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. See MPEP §2144.05(I)) comprising at least one cross-linkable compound comprising at least two functional groups (paragraph [0024]: the at least one surface treatment agent is a compound according to Formula (I)), wherein the at least one functional group is suitable for cross-linking an elastomer resin and wherein at least one functional group is suitable for reacting with the calcium or magnesium carbonate-comprising material (paragraphs [0063]: a “surface-treated calcium carbonate-comprising material” comprises at least a calcium carbonate-comprising material which has been contacted with at least one surface-treatment agent according to the present invention such as to obtain a treatment layer located on at least a part of the surface of the calcium-comprising material; [0066]: a “crosslinking reaction” is defined as a reaction between the surrounding material and the surface-treatment agent that is located on the surface of the surface-treated calcium carbonate-comprising material; and [0048]: the surrounding material is a synthetic or bio sourced polymer formulation, preferably a polyolefin formulation, a polyvinylchloride formulation or a polyester formulation), wherein the at least one functional group that is suitable for reacting with the calcium or magnesium carbonate-comprising material of the cross-linkable compound comprises one or more terminal triethoxysilyl, trimethoxysilyl and/or organic acid anhydride and/or salts thereof and/or carboxylic acid group(s) and/or salts thereof (paragraph [0024]: R2, R3 and R4 are independently from each other selected from the group consisting of … a carboxyl group).
Regarding claim 2, IPPOLITO teaches the composition according to claim 1, wherein the sedimentary ground calcium carbonate is selected from the group consisting of marble, limestone, dolomite, chalk and mixture thereof, or the precipitated calcium carbonate is selected from the group consisting of the aragonitic, vateritic and calcitic mineralogical crystal forms, colloidal precipitated calcium carbonate, and mixtures thereof (paragraph [0034]: the at least one calcium carbonate-comprising material is selected from the group consisting of ground calcium carbonate, preferably marble, limestone, dolomite and/or chalk, precipitated calcium carbonate, preferably vaterite, calcite and/or aragonite).
Regarding claim 3, IPPOLITO teaches the composition according to claim 1, wherein the calcium carbonate-comprising material is sedimentary ground calcium carbonate and/or precipitated calcium carbonate and has
i) a weight median particle size d50 value measured by the sedimentation method in the range form 0.1 µm to 10 µm (paragraphs [0080]: the at least one calcium carbonate-containing material has a weight median particle size d50 of 0.1 to 7 µm, and [0309]: weight median grain diameter and grain diameter mass distribution of a particulate material were determined by sedimentation process). IPPOLITO teaches range which is within the claimed range.
Please note, limitations ii), iii) and iv) are not positive claim limitations as set forth.
Regarding claim 8, IPPOLITO teaches the composition according to claim 1, wherein the composition is formed in that the at least one calcium or magnesium carbonate-comprising material and the at least one cross-linkable compound are provided as physical mixture (paragraph [0022]: step a) providing an aqueous suspension of at least one calcium carbonate-comprising material; adding at least one surface-treatment agent to the aqueous suspension obtained in step b) in an amount ranging from 0.05 to 10 mg surface treatment agent per m2 of the surface area of the at least one calcium carbonate-comprising material as provided in step a)) and/or that the at least one calcium or magnesium carbonate-comprising material is contacted with the at least one cross-linkable compound such that a treatment layer comprising the at least one cross-linkable compound and/or salty reaction products thereof is formed on the surface of the at least one calcium or magnesium carbonate-comprising material.
Regarding claim 9, IPPOLITO teaches the composition according to claim 1, wherein the surface-treatment composition comprises at least one further surface treatment agent (paragraph [0257]: the process comprises a further step h) after or during step a), b), c), d), e) or f) of hydrophobizing the calcium carbonate of step a) or the surface-treated calcium carbonate-comprising material obtained from step d), e) or f) with a hydrophobizing agent different from the surface-treatment agent added in step c) ) selected from the group consisting of
a phosphoric acid ester blend of one or more phosphoric acid mono ester and/or salts thereof and/or one or more phosphoric acid di-ester and/or salts thereof (paragraph [0260]: suitable hydrophobizing agents are selected from the group consisting of phosphoric acid ester blends of one or more phosphoric acid mono-ester and salty reaction products thereof and/or one or more phosphoric acid di-ester and salty reaction products thereof) and
mixtures of one or more materials according to I) to IV).
Please note, limitations II), III) and IV) are not positive claim limitations as set forth.
Regarding claim 21, IPPOLITO teaches the composition according to claim 1, wherein the calcium or magnesium carbonate-comprising material is the calcium carbonate-comprising material having a BET specific surface area of from 0.5 to 14.4 m2/g as measured using nitrogen and the BET method according to ISO 9277:2010 (paragraph [0038]: the specific surface area of the ground calcium carbonate or a precipitated calcium carbonate as measured by the BET nitrogen method according to ISO 9277:2010 is in the range from 1 to 100 m2/g). IPPOLITO teaches range with overlaps with the claimed range.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over IPPOLITO in view of Pohl et al. (EP 2496648 B1), hereinafter referred to as POHL.
Regarding claim 4, IPPOLITO teaches the composition according to claim 1, but fails to explicitly teach wherein the magnesium carbonate-comprising material is precipitated hydromagnesite and has a volume median particle size d50 from 0.1 to 75 µm, and/or a volume top cut particle size d98 from 0.2 to 150 µm, and/or a specific surface area of from 15 m2/g to 200 m2/g measured using nitrogen and the BET method.
However, POHL discloses the process for preparing hydromagnesite (see POHL in paragraph [0001]). POHL also discloses that hydromagnesite is used in huge quantities in the paper, rubber and plastics industries for various purposes such as coatings, fillers, extenders and pigments for papermaking as well as flame-retardants in electrical wires and cables but also to impart resistance to chemicals in fibers (see POHL at paragraph [0007]). IPPOLITO discloses similar uses of the surface-treated calcium carbonate: in paper making, paper coatings, agricultural applications, paints, adhesives, sealants, composite materials, wood composite materials, construction applications (see IPPOLITO at paragraph [0002]). POHL teaches the hydromagnesite having a specific BET surface area of 10 m2/g to 150 m2/g, and comprising particles having an average particle size d50 of less than 20 µm (see POHL at paragraphs [0027] and [0029]). POHL also teaches that the hydromagnesite is further treated with fatty acids (see POHL at paragraph [0030]).
Both IPPOLITO’s and POHL’s disclosures describe alkali earth metal carbonates such as calcium carbonate and magnesium carbonate. POHL also discloses that the magnesium carbonate particles can undergo surface modification (see POHL at paragraph [0030]). Furthermore, IPPOLITO and POHL describe similar uses of the obtained functionalized alkali earth metal carbonates. According to MPEP § 2144.06(I), "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the process of IPOLITO by utilizing magnesium carbonate such as hydromagnesite as disclosed by POHL based on teachings of POHL describing the hydromagnesite particles useful for the same purpose as disclosed by IPPOLITO. Moreover, since calcium and magnesium are alkali earth metal and have similar chemical properties, one of ordinary skill in the art would have anticipated success when modifying the surface of the hydramagnesite of POHL according to the process of IPPOLITO.
The rationale for such modification would have been combining prior art elements according to known methods to yield predictable results. See MPEP §2143(I) (Exemplary rationale (A)).
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over IPPOLITO in view of Gane et al. (EP 3192837 A1), hereinafter referred to as GANE, with evidence from Ricon®-130-MA8 Technical Data Sheet retrieved from https://crayvalley.com/wpfd_file/ricon-130-ma8/ on 07/23/2025, as to the rejection of claim 7.
Regarding claim 6, IPPOLITO teaches the composition of claim 1. While IPPOLITO discloses a reaction between the surrounding material and the surface-treatment agent that is located on the surface of the surface-treated calcium carbonate-comprising material (due to this reaction a bond is created between the surrounding material and the surface-treatment agent that is located on the surface of the surface-treated calcium carbonate-comprising material), and that the surrounding material is a synthetic or bio sourced polymer formulation (see IPPOLITO at paragraphs [0048] and [0066]), but IPPOLITO is silent with respect to the cross-linkable compound being at least one grafted polymer comprising at least one succinic anhydride group obtained by grafting maleic anhydride onto a homo- or copolymer comprising butadiene units and optionally styrene units or a sulfur-containing trialkoxysilane.
However, similarly to IPPOLITO describing that in the field of synthetic or bio sourced polymer compositions, in paper making, paper coatings, agricultural applications, paints, adhesives, sealants, composite materials, wood composite materials, construction applications, pharma applications and/or cosmetic applications the use of a surface-treated calcium carbonate-comprising material is highly desirable (see IPPOLITO at paragraph [0002]), GANE discloses a process for the surface treatment of a surface-modified calcium carbonate, and the use of the surface-treated calcium carbonate in polymer composition, in paper making, paper coatings, agricultural applications, paints, adhesives, sealants, construction applications, pharma applications and/or cosmetic applications, or for cross-linking of rubber, in sheet moulding compounds, in bulk moulding compounds (see GANE at paragraph [0001]). GANE also discloses the process comprising the steps of
a) providing an aqueous suspension of at least one surface-modified calcium carbonate having solids content in the range from 5 to 80 wt.-%, based on the total weight of the aqueous suspension;
b) adjusting the pH-value of the aqueous suspension of step a) to a range from 7.5 to 12;
c) adding at least one surface treatment agent to the aqueous suspension obtained in step b) in an amount ranging from 0.05 to 1 0 mg surface treatment agent per m2 of the surface area of the surface-modified calcium carbonate as provided in step a), the at least one surface treatment agent is selected from the group consisting of mono- or di-substituted succinic anhydride containing compounds, mono- or di-substituted succinic acid containing compounds, mono- or di-substituted succinic acid salts containing compounds; unsaturated fatty acids, salts of unsaturated fatty acids; unsaturated esters of phosphoric acid, salts of unsaturated phosphoric acid esters; abietic acid, salts of abietic acid and mixtures thereof;
d) mixing the aqueous suspension obtained in step c) at a temperature in the range from 30 to 120°C
e) drying the aqueous suspension during or after step d) at a temperature in the range from 40 to 160°C at ambient or reduced pressure until the moisture content of the obtained surface-treated calcium carbonate is in the range from 0.001 to 20 wt.%, based on the total weight of the surface-treated calcium carbonate (see GANE at paragraph [0021]).
The process of GANE is identical to the one described by IPPOLITO (see IPPOLITO at paragraphs [0022-26]). Furthermore, among suitable calcium carbonate-comprising material, IPPOLITO discloses the surface-reacted calcium carbonate is a reaction product of natural ground or precipitated calcium carbonate with carbon dioxide and one or more H3O+ ion donors in an aqueous medium, wherein the carbon dioxide is formed in situ by the H3O+ ion donor treatment and/or is supplied from an external source (see IPPOLITO at paragraph [0034]). Since GANE teaches that a "surface-modified calcium carbonate" is a reaction product of natural ground calcium carbonate or precipitated calcium carbonate with carbon dioxide and one or more H3O+ion donors, wherein the carbon dioxide is formed in situ by the H3O+ ion donors treatment and/or is supplied from an external source (see GANE at paragraph [0043]), one of ordinary skill in the art would have anticipated success when applying cross-linkable compounds of GANE to the calcium carbonate-containing compounds of IPPOLITO. GANE teaches that one of the examples of cross-linkable agents is maleinized polybutadiene (see GANE at paragraph [0034] and Table 1: treatment agent 1: Ricon 130MA08).
One of ordinary skill in the art would have anticipated success when applying cross-linkable compounds of GANE, e.g., malenized polybutadiene, based on the teachings of IPPOLITO describing the surface-reacted calcium carbonate among suitable calcium carbonate-comprising material (see IPPOLITO at paragraph [0034]). Moreover, one of ordinary skill in the art would have been motivated to apply cross-linkable compounds of GANE to the calcium carbonate-containing compounds of IPPOLITO since GANE and IPPOLITO explicitly teach identical processes for the surface treatment of calcium carbonate-containing compounds.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied cross-linkable compounds of GANE, e.g., malenized polybutadiene, to the calcium carbonate-containing compounds disclosed by IPPOLITO because there is a reasonable expectation of success that malenized polybutadiene disclosed by GANE would be a suitable cross-linkable compound.
Regarding claim 7, IPPOLITO as modified by GANE teaches the composition according to claim 6, wherein the at least one grafted polymer is
a grafted polybutadiene homopolymer comprising at least one succinic anhydride group obtained by grafting maleic anhydride onto a polybutadiene homopolymer (see GANE at paragraph [0034]: the at least one surface treatment agent is maleinized polybutadiene and Table 1: treatment agent 1: Ricon 130MA08) and having
a number average weight Mn measured by gel permeation chromatography from 1000 to 20000 g/mol (see GANE at Table 1: treatment agent 1: Ricon 130MA08, as evidenced from the provided data sheet the molecular weight of Ricon 130MA8 is 2700 g/mol).
Please note, limitations ii), iii), iv) and b) are not positive claim limitations as set forth.
Response to Arguments
Applicant’s arguments with respect to claims 1-3 and 6-9 as being anticipated by GANE have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/A.A.K./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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