DETAILED ACTION
An Office Action was mailed 11/04/2025. Applicant filed a Response, amended claims 1, 5 8, 12 and 17, cancelled claims 11 and 18, and added claims 21-23 on 03/04/2026.
Claims 1-10, 12-14, 16-17 and 19-23 are pending.
Claims 1-8, 12-14 and 21-23 are rejected.
Claims 9-10, 16-17 and 19-20 are withdrawn from consideration.
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 .
Claim Objections
Applicant is advised that should claim 22 be found allowable, claim 23 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 23 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 22. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claims 22 and 23 differ only in that:
claim 22 recites, “wherein at least 30 wt.% of said filler particles have a diameter between 50 and 100 microns inclusive,” and
claim 23 recites, “wherein at least 30 wt.% of a total amount of said filler particles have a diameter between 50 and 100 microns inclusive,” (emphasis added).
One of ordinary skill in the art would interpret these two claims as claiming the same amount of filler particles, i.e., based on the total amount of said filler particles. Therefore, claim 23 is a substantial duplicate of claim 22.
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 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 1-5, 7, 12 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Kochibrolashvili et al, EP 2907854A1 (Kochibrolashvili) taken in view of evidence by Chen, CN 107663385A (Chen) and Kremer Pigmente, “Pumice Powder 6/0, very fine” (Kremer).
The Examiner has provided a machine translation of Chen with the Office Action mailed 11/04/2025. The citation of the prior art in this rejection refers to the machine translation.
Regarding claims 1-4, 7, 12 and 21-23 Kochibrolashvili teaches a filler composition (i.e., a filler compound) comprising:
5-40 weight% of a hydrophilic binder,
5-30 weight% water,
20-70 weight% of a pumice powder,
0-40 weight% of a filler, wherein the weight percentages are based on the total weight of the filler composition (Kochibrolashvili; [0009] and [0011]).
The hydrophilic binder comprises one or more selected from polyvinyl acetate, polyvinyl alcohol, acrylics, polyvinylchloride, nylon, polyurethanes, polyisocyanate, natural based polymers, carboxylated styrenics, carboxylated butadiene styrene copolymers and carboxylated butadiene rubbers, i.e., polymer binders (claims 7 and 22-23) (Kochibrolashvili; [0015]).
5-40 weight% of a hydrophilic binder, based on the total weight of the filler composition, overlaps in scope with the claimed 1.0 to 6.0 wt% polymer binder, based on the dry mass of the filler compound (claims 22-23). For example, if the filler composition of Kochibrolashvili contains 90% solids (i.e., 10% water) and 5% hydrophilic binder, the composition would contain 5.6% hydrophilic binder (5/90 x 100 = 5.6%), based on the dry mass of the filler composition.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
The filler composition may comprise between 0 wt% and 40 wt% of a filler other than pumice powder, wherein said filler may be calcite or calcium carbonate as claimed (Kochibrolashvili; 0021]). In one embodiment, the preferred filler comprises calcite (i.e., calcium carbonate) (Kochibrolashvili; [0022]).
The filler composition comprises pumice powder in an amount between 30-70 wt%, preferably 35-65 wt%, more preferably 40-60 wt%, based on the weight of the filler composition. The pumice powder has a particle size of 50-500µm, more preferably 80-150µm (Kochibrolashvili; [0020]). The pumice powder of Kochibrolashvili corresponds to the claimed filler particles comprising at least one glassy material, wherein the at least one glassy material comprises particles of pumice (claim 2).
Pumice powder particle sizes of 50-500µm, more preferably 80-150µm, overlap in scope with wherein at least 30% of said filler particles have a diameter between 50 and 100 microns inclusive (claim 1), and wherein at least 35% of said filler particles have a diameter between 50 and 100 microns inclusive (claim 21).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
In the Table on page 6, Kochibrolashvili exemplifies filler compositions comprising a polymeric binder, pumice powder (ex 1-3), as well as calcite (ex4-ex6).
For example, the composition of ex1 comprises: 34.19% Emultex, 2.56% Bindzil cc401 and 63.25% pumice powder. Emultex is a polyvinyl acetate binder (i.e., a polymer binder) having a total solids contents between 51.5 and 53.5 wt% (Kochibrolashvili; [0045]). Bindzil is an epoxy-silane modified colloidal silica having a solids content of 30 wt% or 40 wt% (Kochibrolashvili; [0043]). As is evidenced by Chen, Bindzil CC401 has a 40 wt% solids content (Chen; page 4, lines 43-44).
The dry mass of Emultex and Bindzil from ex1 is calculated as follows, using 52.5% as the average solids content of Emultex:
34.19 parts Emultex * 0.525 solids = 17.95 parts solids Emultex
2.56 parts Bindzil * 0.4 = 1.02 parts solids Bindzil
The total solids content of ex1 can be calculated as follows:
17.95 Emulex + 1.02 Bindzil + 63.25 pumice = 82.22 total solids
The percent weight percent of pumice per the dry mass of ex1 can then be calculated as follows:
63.25 pumice/82.22 total silds * 100 = 76.93%
Therefore, the pumice powder of ex1 comprises 76.93% of the dry mass of the filler compound, reading on the claimed at least 10 wt% pumice (claims 1-3) and at least 20 wt% pumice (claim 4), based on the dry mass of the filler compound.
Kochibrolashvili teaches that the pumice powder used in the exemplified compositions is “Pumice Powder 6/0, very fine”, particles ˂ 90 micron (Kochibrolashvili; [0046]). As is evidenced by Kremer (see Kremer, page 1 for all references), 99-100% of “Pumice Powder 6/0, very fine” meets the Spec Limits of Sieve residue, 170 mesh (90µm). 55-65% meet the Spec Limits of Sieve residue, 325 mesh (45µm). Therefore, it is clear that 35-45% of the pumice particles have a particle size greater than 45 microns and less than 90 microns. Therefore, it is clear that the compositions of Kochibrolashvili may comprise at least 30 wt% (claim 1) or at least 35 wt% (claim 21) of filler particles having a diameter between 50 and 100 microns inclusive as claimed.
Kochibrolashvili further teaches using at least 5 wt%, based on the dry mass of the compositions, of calcium carbonate as claimed (claim 12).
See, for example, Table 1, ex4, the composition which comprises 33.22% the binder Emultex, 2.99% Bindzil modified colloidal silica, 1.99% cellulose 200 micron fibers, 48.84% pumice powder, and 12.96% calcite (Kochibrolashvili; page 6, Table 1, ex4 and [0043-0046]).
The solids content (dry mass) of Emultex and Bindzil is calculated as follows:
33.22 parts Emultex * 0.525 (solids) = 17.44 parts solids Emultex
2.99 parts Bindzil * 0.4 (solids) = 1.20 parts solids Bindzil
The total dry mass of the composition of ex4 is 81.91% (i.e., 17.44 Emultex + 1.20 Bindzil + 1.99 cellulose fibers + 48.84 pumice powder + 12.96 calcite = 82.43). Therefore, the weight percent of calcite = 12.96/82.43 * 100 = 15.72 wt%, based on the dry mass of the filler composition. This falls within the claimed at least 5 wt% of the dry mass of the filler compound (claim 12).
Regarding claim 5, Kochibrolashvili is relied upon as teaching the limitations of claim 1 as discussed above. In ex1, Table 1 of Kochibrolashvili, 99-100% of the filler particles, i.e., the “Pumice Powder 6/0, very fine,” have particles ˂90 microns (Kochibrolashvili; [0046] and Kremer, page 1). Therefore, at least ex1 of Kochibrolashvili teaches filler compounds wherein at least 95 wt% of said filler particles have a diameter below 200 microns as claimed.
Claims 1-3, 5-6, 8, 12-14 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Kawanishi et al, JP 2007138462A (Kawanishi) in view of Brox, US 2008/0281028 A1 (Brox), and taken in view of evidence by Sethuraman et al, US 2004/0045481A1 (Sethuraman).
The Examiner has provided a machine translation of Kawanishi with the Office Action mailed 11/04/2025, which includes a Goggle assisted translation of Table 1 with added Examiner calculations. The citation of Kawanishi in this rejection refers to the machine translation. Brox was cited in the IDS filed 10/10/2024.
Regarding claims 1-2, 6 and 21, Kawanishi teaches a joint treatment material (i.e., a filler compound) comprising gypsum mixed with one or more of a filler, an adhesion-imparting agent, a viscosity modifier, a setting modifier, a colorant, an inorganic “balloon” having a particle size of 50 to 150µm, and an organic “ballon” having a particle size of 5 to 30µm (Kawanishi; [0001] and [0017]).
Examples of the inorganic hollow balloons having a particle size of 50 to 150µm include silica balloons and glass balloons which are obtained by firing volcanic ash, fly ash, and glass fine particles (i.e., glassy materials), and are mixed in the range of 10-15 weight% (i.e., at least 10 wt% of the dry mass of said filler compound). Such hollow balloons are known in the art as “light fillers” (Kawanishi; [0009]).
The gypsum is preferably α-type gypsum hemihydrate (Kawanishi; [0018]). As is evidenced by Sethuraman, gypsum hemihydrate is another term for stucco (Sethuraman; [0013], [0018] and [0019]). Therefore, Kawanishi teaches a stucco binder as claimed (claim 6).
The filler also comprises calcium carbonate having a particle size of 150µm or less (claim 1) (Kawanishi; [0028]).
In Table 1, Compositions A-I are exemplified (Kawanishi; page 6, Table 1). Based on the Google assisted translation and calculations provided (added under Table 1), the wt% range of calcium carbonate/filler particles present in Compositions A-I ranges from 37.5 to 50 wt%.
As an example calculation, Composition A comprises a total of 200 parts by weight total components. Composition A comprises 20 parts inorganic hollow filler, 10 parts organic hollow filler, and 30 parts calcium carbonate filler, for a total of 20 + 10 + 30 = 60 total parts filler. Therefore, the “% calcium carbonate/filler particles” in Composition A is 30/60*100 = 50 wt%.
Using the same calculation for the inorganic hollow particles, the % hollow inorganic/filler particles in Compositions A-I ranges from 29-43 wt%.
Because Kawanishi teaches that inorganic hollow particles have a particle size of 50 to 150µm (Kawanishi; [0017]) and comprise about 29-43 wt% of the filler particles, and that calcium carbonate has a particle size of 150µm or less (Kawanishi; [0028]) and comprises about 37.5 to 50 wt% of the filler particles, it is clear that claimed range wherein at least 30 wt% (claim 1), or at least 35 wt% (claim 21) of said filler particles have a diameter between about 50 and 100 microns overlaps in scope with the teachings of Kawanishi.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Kawanishi does not explicitly teach wherein the light filler particles comprise pumice as claimed (the elected species of claim 2).
With respect to the difference, Brox teaches a light plaster mixture comprising a binder, inorganic fillers, light fillers and water (Brox; Abstract). Light fillers include inorganic fillers such as pumice, blown glass and hollow glass balls (Brox; [0018]). The light filler preferably has an average particle diameter in the range of 50µm to 5mm (Brox; [0020]).
The inorganic fillers may be combined with organic light fillers, as well as other inorganic fillers such as carbonates (Brox; [0019] and [0021]).
Brox is analogous art as it teaches building compositions comprising a binder and glassy fillers such as pumice and hollow glass balls which may be of the claimed particle sizes.
In light of the disclosure of Brox of the equivalence and interchangeability of using hollow glass balls (i.e., glass balloons) as disclosed in Kawanishi (Kawanishi; [0026]) with pumice as presently claimed, it would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use pumice as the inorganic light filler in the joint treatment materials of Kawanishi, and thereby arrive claimed invention.
Regarding claim 3, Kawanishi in view of Brox is relied upon as teaching the limitations of claim 1 as discussed above, wherein pumice is used as the inorganic light filler. Kawanishi teaches that the inorganic light fillers are mixed in the range of 10-15 weight% (i.e., at least 10 wt% of the dry mass of said filler compound) (Kawanishi; [0026]).
Regarding claim 5, Kawanishi in view of Brox is relied upon as teaching the limitations of claim 1 as discussed above. Kawanishi teaches that the joint treatment material comprises an inorganic light filler (balloon) having a particle size of 50 to 150µm, and an organic light filler (balloon) having a particle size of 5 to 30µm, and a filler having a particle size of 150µm or less (Kawanishi; [0017] and [0028]). Therefore, the filler particles of Kawanishi all have a particle size below 200 microns as claimed.
Brox teaches the light filler, such as pumice, preferably has an average particle diameter in the range of 50µm to 5mm (Brox; [0020]).
Therefore, when substituting the hollow glass balloons of Kawanishi with the pumice of Brox, those skilled in the art would have been motivated to use pumice particles with a size of 150µm or less in order to meet the size requirements of Kawanishi, and thereby arrive at the claimed invention.
Regarding claim 8, Kawanishi in view of Brox is relied upon as teaching the limitations of claim 1 as discussed above, wherein pumice is used as the light inorganic filler. Kawanishi teaches the joint treatment materials eliminate the problems of thinning, enhancing work efficiency and providing a safe work environment (Kawanishi; Abstract and [0016]).
Kawanishi does not explicitly teach wherein 20 wt.% to 80 wt.% inclusive of said filler has a bulk density of between 200-2000 g/l.
Brox teaches that the light filler preferably has a particle diameter range of 50µm to 5mm. The bulk density of the light fillers is thereby ˂1 g/cm3, i.e., less than 1000 g/l (Brox; [0019]). The other inorganic fillers selected from carbonate, etc., have a particle size of 2µm to 5mm and a bulk density of ˃1 g/cm3, i.e., greater than 1000 g/l (Brox; [0021]).
In light of the teachings of Brox that the bulk density of light fillers should be less than 1000 g/l and the bulk density other inorganic fillers should be greater than 1000 g/l, it would have been obvious to one of ordinary skill in the art to adjust the bulk density of the light fillers to less than 1000 g/l, and to adjust the bulk density inorganic fillers to greater than 1000 g/l, in the compositions of Kawanishi in view of Brox, in order to provide a joint treatment material with reduced thinning, and enhanced work efficiency and environmental safety. Bulk densities greater than and less than 1000 g/l overlap in scope with the claimed range wherein 20 wt% to 80 wt% inclusive of said filler has a bulk density of between 200-2000 g/l.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA1980) (see MPEP § 2144.05, II.).
Regarding claim 12, Kawanishi in view of Brox is relied upon as teaching the limitations of claim 1 as discussed above. In Table 1, Compositions A-I, Kawanishi exemplifies wherein particles of calcium carbonate are 15 wt% of the dry mass of the joint treatment material (Kawanishi; page 6, Table 1). As an example calculation, Composition A of Table 1 comprises a total of 200 parts by weight of components. Composition A comprises 30 parts calcium carbonate. Therefore, Composition A comprises 30/200 * 100 = 15 wt% calcium carbonate based on the dry mass of the composition. 15 wt% calcium carbonate falls within the claimed range of at least 5 wt% calcium carbonate, based on the dry mass of the filler compound.
Regarding claim 13, Kawanishi in view of Brox is relied upon as teaching the limitations of claim 1 as discussed above. Kawanishi teaches and exemplifies compositions comprising a viscosity modifier, wherein the viscosity modifier methylcellulose (Kawanishi; [0017], [0030] and [0037]).
Regarding claim 14, Kawanishi in view of Brox is relied upon as teaching the limitations of claim 1 as discussed above. Kawanishi teaches and exemplifies compositions comprising a setting modifier to delay the setting time of gypsum (i.e., a retarder), such as the setting modifier citrates (Kawanishi; [0031] and [0037]).
Response to Arguments
1) Applicant Remarks, and Amendments to claim 5 and 8, filed 03/04/2026, have overcome the 35 USC 112(b) rejections previously of record.
2) Applicant’s arguments, see Remarks, page 7, filed 03/04/2026, with respect to the 35 U.S.C § 102 rejection over Kochibrolashvili taken in view of evidence by Chen and Kremer have been fully considered and are persuasive. The rejection of claims 1-5 and 7 has been withdrawn.
Specifically, claim 1 has been amended to include the subject matter of claim 11, i.e., wherein said filler particles comprise particles of calcium carbonate, which was not rejected as being anticipated by Kochibrolashvili.
3) Applicant's remarks filed 03/04/2026 with respect to the evidence of record have been fully considered, but they are not persuasive for the following reasons.
Applicant first argues:
“The present inventors have found that the particle size distribution of the filler particles can have a significant impact on the amount of shrinkage that occurs when a filler compound is dried. …
See, Tables 1 and 3 of the Specification as filed. Examples 1-5, which have various glassy materials as filler particles (i.e., pumice, expanded perlite, and cenospheres) with the claimed particle size distribution (i.e., at least 30% of the filler particles having a diameter in the range of 50 to 100 µm inclusive) exhibited a depth of shrinkage of no more than 0.5 mm (see, Table 2, Specification as filed). In contrast, Comparative Examples 1-3 and 6-8, which contain filler particles outside of the claimed range, and Comparative Examples 4 and 5, which lack glassy materials entirely, exhibited depth of shrinkage values greater than 0.5 mm, which can be undesirable for aesthetic reasons. See, Specification as filed, p. 9, 11. 5-8.”
Remarks, pages 7-9.
Examples 1-5 and Comparative Examples 1-8, on page 6, line 28-page 9, line 8 of the specification cannot be used as evidence to show that the particle size distribution of the filler particles can have a significant impact on the amount of shrinkage that occurs when a filler compound as presently claimed is dried (emphasis added), because the filler compounds of Examples 1-5 do not fall within the scope of the present claims.
It is noted that the data of Examples 1-5 does not provide filler compounds which comprise particles of calcium carbonate (claim 1), or a polymer binder in an amount of 1.0 to 6.0 wt% of the dry mass of the filler compound (claims 22-23) as presently claimed. Therefore, working examples 1-5 of the specification do not fall within the scope of the claimed invention.
4) Applicant further argues:
“Similar benefits regarding minimal shrinkage was observed for various stucco-based filler compounds (Examples 6-9) and polymer-based filler compounds (Examples 10-17) that contain pumice and calcium carbonate filler particles, wherein at least 30 wt% of the filler particles - i.e., both the pumice and the calcium carbonate - have diameter between 50 and 100 microns. See, e.g., Tables 4 and 5 of the Specification as filed. Accordingly, the present inventors have demonstrated that the claimed particle size distribution of filler particles is desirable for filler compounds to exhibit minimal shrinkage.”
Remarks, pages 9-10.
The evidence of Examples 6-17 and Table 4-5 of the Specification is not persuasive to show the criticality of at least 30 wt% of said filler particles having a diameter between 50 and 100 microns inclusive for minimizing shrinkage in filler compounds, for the following reasons. While these results show that good shrinkage is obtained with filler compounds as claimed, there are no side-by-side comparisons of the closest prior art of record, i.e., Kochibrolashvili and Kawanishi¸ to the elected invention.
Evidence of unexpected properties must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). See MPEP 716.02(e).
In fact, the only comparisons of the claimed invention are found in Table 8 wherein Examples 11 and 15 are compared against various “Existing Products.” The amount of glassy material and/or particle size distribution of the filler particles of the “Existing Products” are not provided. These comparisons also do not appear to represent the closest prior art of record.
Examiner notes that Example 1 of Table 8 states that the filler comprises pumice and calcium carbonate. The wt% of glassy material and the particle size distribution of this composition is unclear because Example 1 as presented on page 7 of the specification does not appear to contain calcium carbonate. Therefore, this it is unclear of this Example 1 is representative of the presently claimed invention.
5) Applicant further argues:
“And indeed, the present inventors note that:
Further, the experimental data has illustrated that successful results are obtained with a variety of values of the weight percentage of filler particles with a diameter between 50 and 100 microns inclusive. Finally, the experimental data has also shown that a range of weight percentages of the particles of glassy material can be used to achieve the desired low shrinkage filler compound.
Specification as filed, p. 14, 11. 7-10.”
Remarks, page 9.
Examiner respectfully disagrees. The data of Examples 6-9 of Table 4 (page 10 of the specification) only shows using filler compounds comprising 40wt% of the specific binder stucco, 6.6wt% or 26.6wt% of calcium carbonate, 30wt% or 50wt% of the specific glassy material pumice, alone or in combination with “microspheres,” and 35-50wt% of filler particles with a diameter between 50 and 100 microns inclusive, while claim 1 and its dependent claims broadly encompass filler compounds comprising any binder in any amount, any filler particles comprising particles of at least one glassy material (elected pumice) in any amount of greater than or equal to 10 wt% of the dry mass of said filler compound, and particles of calcium carbonate in any amount, and wherein any amount greater than or equal to 30 wt.% of said filler particles have a diameter between 50 and 100 microns inclusive.
Further, the data does not show using the upper or lower end of the glassy material weight percents, or the upper and lower end of the weight percent of filler particles with the claimed diameters.
Examiner notes Examples 6-9 do not contain a polymeric binder, and therefore do not read on claims 22-23.
While Examples 10-17 of Table 5 (pages 11-12 of the specification) comprise the polymeric binder vinyl acetate, the amount of the binder is not given in the data. Therefore, it is unclear if the working examples fall within the scope of the claims 22-23 which require 1.0-6.0wt% of the dry mass of the filler compound of polymeric binder.
Further, the data only shows using filler compounds comprising the specific binder polyvinyl acetate, 52.6-76.6wt% of calcium carbonate, 20-45wt% of the specific glassy material pumice, alone or in combination with “microspheres,” and 34-47wt% of filler particles with a diameter between 50 and 100 microns inclusive, while the claims broadly encompass filler compounds comprising any binder in any amount (claim 1), or a polymeric binder in any amount of 1.0-6.0wt% of the dry mass of the filler compound (claims 22-23), any filler particles comprising particles of at least one glassy material (elected pumice) in any amount of greater than or equal to 10 wt% of the dry mass of said filler compound, and particles of calcium carbonate in any amount, and wherein any amount greater than or equal to 30 wt.% of said filler particles have a diameter between 50 and 100 microns inclusive.
Further, the data does not show using the upper or lower end of the glassy material weight percents, or the upper and lower end of the weight percents of filler particles with the claimed diameters.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
6) Applicant's arguments filed 03/04/2026 with respect to the 35 U.S.C § 103 rejection over Kochibrolashvili taken in view of evidence by Chen and Kremer have been fully considered, but they are not persuasive for the following reasons.
Applicant first argues:
“As a threshold matter, even if Kremer suggests that 35-45 wt% of the pumice particles of "Pumice Powder 6/0, very fine" have a particle size in the range of 45-90 microns, the Office has not shown how those 35-45 wt% of the pumice particles are distributed within the range of 45-90 microns. Notably, the "Pumice Powder 6/0" is "very fine." And the data in Kremer bear this out, as 55-65% of the particles appear to be less than 45 microns in diameter, and only 2-14% of the particles appear to be above 63 microns in diameter. The person of ordinary skill in the art would expect from this that the particle size distribution of the fraction of the "Pumice Powder 6/0, very fine" that is above 45 microns in size would be overwhelmingly shifted toward the lowest edge of that range. Given this expectation, the Office has not shown how at least 30 wt% of the "Pumice Powder 6/0, very fine" would be in the 50-100 micron range (or at least 35 wt% as in new claim 21).”
Remarks, pages 10-11.
Examiner respectfully disagrees for the following reasons. As is evidenced by Kremer, about 35 to 45 wt% of the pumice particles of "Pumice Powder 6/0, very fine" have a size in the range of from 45 to 90µm, i.e., if 55-65% are 45µm or less, and 99-100% are 90µm or less, then 35-45% are 90-45µm. Absent evidence proving otherwise, a person of ordinary skill in the art would reasonably conclude that wherein 35-45 wt% of pumice particles having a size in the range of from 45 to 90µm falls within the claimed range of “wherein at least 30 wt% of said filler particles have a diameter between 50 and 100 microns inclusive.”
7). Applicant further argues:
“Kochibrolashvili notes that various amounts of additional filler,¹ including calcite, can be used.
The filler composition according to the present invention may comprise between 0 wt% and 40 wt%, preferably between 10 wt% and 35 wt%, more preferably between 15 wt% and 30wt% of a filler. … Preferably, fillers to be used in the filler composition according to the present invention are fillers comprising particles of at least one material selected from the group consisting of talc, calcite, calcium carbonate … The particle size of the filler preferably is 1-20 um, more preferably 5-15 um.
Kochibrolashvili, [0021]. Thus, Kochibrolashvili teaches the use of 15 to 30 wt% of fillers that are very small in size.
Remarks, page 11.
Examiner respectfully disagrees that “thus, Kochibrolashvili teaches the use of 15 to 30 wt% of fillers that are very small in size” because Kochibrolashvili teaches using calcium carbonate filler in all amounts ≥ 0% up to 40 wt%, i.e., Kochibrolashvili is not limited to the range of 15-30%.
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v.
Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). MPEP 2123 I.
8) Applicant proceeds to use ex4-ex6 to calculate the exemplified amounts of filler particles having diameters smaller than 50µm. Applicant concludes:
“… there is nothing in these examples of Kochibrolashvili that would lead the person of ordinary skill in the art to arrive at the claimed particle size of filler.
Furthermore, there is nothing in Kochibrolashvili that would suggest the criticality of at least 30 wt.% of said filler particles have a diameter between 50 and 100 microns inclusive for minimizing shrinkage in filler compounds. Rather, the only place this is suggested in the record is in Applicant's own data.”
Remarks, page 12.
Examiner respectfully disagrees because as explained in 7), a reference is not limited to its preferred embodiments or working examples. As explained in 6) above, Kochibrolashvili exemplifies particle sizes distributions as claimed. As explained in the 35 U.S.C. 103 rejection, Kochibrolashvili teaches the filler composition comprises pumice powder in an amount between 30-70 wt%, preferably 35-65 wt%, more preferably 40-60 wt%, based on the weight of the filler composition, wherein the pumice powder has a particle size of 50-500µm, more preferably 80-150µm (Kochibrolashvili; [0020]) (see page 6 above).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA1980) (see MPEP § 2144.05, II.).
Further, as explained in 3-5) above, the evidence of record is not deemed persuasive to show the criticality of at least 30 wt.% of said filler particles have a diameter between 50 and 100 microns inclusive for minimizing shrinkage in filler compounds over the prior art of record.
9) Applicant’s Remarks regarding the 35 U.S.C. § 103 rejection over JP 2007138462A (Kawanishi) in view of US 2008/0281028 A1 (Brox) and as evidenced by US 2004/0045481A1 (Sethuraman), have been fully considered, but are not deemed persuasive for the following reasons.
Applicant first argues:
“… Kawanishi discloses broader particle size ranges for the each the glassy material and the calcium carbonate compared to the filler particle size distribution recited in claim 1 that the present inventors found to be critical. There is nothing in Kawanishi that suggests to the person of ordinary skill in the art any way to narrow down the particle sizes of the inorganic ballons and calcium carbonate to arrive at the claimed invention. And there is nothing in Kawanishi that suggests that the claimed filler particle size distribution would be critical for reducing shrinkage of the filler compound.”
Remarks, pages 13-14.
Examiner respectfully disagrees because, as explained on pages 10-11 in the above 35 U.S.C. § 103 rejection, Kawanishi teaches inorganic “balloon” having a particle size of 50 to 150µm (Kawanishi; [0001] and [0017]), and calcium carbonate filler having a particle size of 150µm or less (claim 1) (Kawanishi; [0028]). These teachings clearly encompass particle size distributions as claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Further, as explained in 3-5) above, the evidence of record is not deemed persuasive to show the criticality of at least 30 wt.% of said filler particles have a diameter between 50 and 100 microns inclusive for minimizing shrinkage in filler compounds over the prior art of record.
10) Applicant next argues:
“The Office relies on Brox to teach the use of pumice as a glassy filler. Non-Final Office Action, p. 14. While Applicant does not concede that the person of ordinary skill in the art would have had any reason to combine the disclosures of Kawanishi and Brox as alleged by the Office, Applicant submits that Brox does not remedy the deficiencies of Kawanishi as described above.”
Remarks, page 14.
Because Applicant has not provided reasoning why the combination of Kawanishi and Brox is erroneous, the Office maintains that the rejection is proper and remains as of record.
11) Regarding new claim 22, Applicant argues:
“Kochibrolashvili suggests the use of 10-20 wt% of hydrophilic binder. See, Kochibrolashvili, [0011]. Kochibrolashvili uses Emultex VV530, which contains 51.5 and 53.5 wt% solids, in the preparation of ex1 to ex6. Based on the calculations performed by the Office, wherein ex1 contains 17.95 parts solids Emultex and 82.22 parts total solids, exl would have ~21.8 wt% polymer binder, on a dry mass basis. The person of
ordinary skill in the art will appreciate that Kochibrolashvili thus describes filler compounds having substantial amounts of polymer binder. There is nothing in Kochibrolashvili that would suggest the use of 1.0 to 6.0 wt% of polymer binder. And there is nothing in Kochibrolashvili that would suggest that the filler compounds of claim 21 (as exemplified by Examples 10-16 of the Specification as filed) would advantageously exhibit minimal shrinkage.
For at least these reasons, Applicant submits that new claim 22 is patentable.”
Remarks, page 15.
Examiner respectfully traverses because Kochibrolashvili broadly teaches the use of 5-40 weight% hydrophilic binder, which overlaps with the claimed rage of 1.0 to 6.0 wt% of the dry weight of the filler compound as claimed (Kochibrolashvili; [0009] and [0011]). As explained in 7), a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v.Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). MPEP 2123 I.
Further, as set forth in MPEP 2144.05, in the case where the claimed range “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).
As explained in 3-5) above, the evidence of record is not deemed persuasive to show the criticality of at least 30 wt.% of said filler particles have a diameter between 50 and 100 microns inclusive for minimizing shrinkage in filler compounds.
Examiner maintains that new claims 21-23 are obvious for the reasons set forth in the above 35 U.S.C. § 103 rejections.
Therefore, Applicant’s Remarks have been fully considered, but are not deemed persuasive.
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 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.
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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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