DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicants’ election with traverse of Group I (claims 1-10 and 19-20; “a synthetic mineral composition,” “a synthetic stone,” and “a paint composition, an ink composition, a filtration medium, a ceramic composition, a dental composition, a biomedical composition, an implant material, a fuel cell, or a nuclear waste immobilization composition”) in the reply filed on 11/19/2025 is acknowledged. The applicants argue at page 5 of their Remarks filed 11/19/2025 that applicants’ claims recite “a high purity” synthetic mineral composition comprising 90.5 weight % or more diopside, and in contrast to applicants’ claims, Wuhrer does not disclose any synthetic mineral composition that comprises 90.5 weight % or more diopside, and how to increase the purity, and thus, the claims of Groups I-III share a special technical feature and non-elected Groups II and III should be rejoined and examined in this application.
However, this argument is not persuasive at this time for the following reasons. First, the claims do not require their synthetic mineral composition to be of “high purity” as argued by applicants, and thus, it is not clear what constitutes “high purity” without further explanation or definition on the record. Since the phrase “high purity” is not required by the claims, it is not required for Wuhrer to teach or suggest such limitation. Secondly, non-elected claims 11 and 13 did not previously require the presence of 90.5 weight % or more diopside (see claim amendment dated 01/26/2023) and thus, the common technical feature between Groups I-III at that time was “the synthetic mineral composition” taught by Wuhrer as explained in the previous Office action mailed 08/01/2025. The applicants for the first time added the feature “90.5 weight % or more diopside” into non-elected claims 11 and 13 as shown in claim amendment filed 11/19/2025. In any event, Wuhrer teaches a synthetic mineral composition comprising, for example, 90 % by weight of synthetic diopside (Col. 1, lines 10-20 and Col. 7, lines 50-55), which is close to 90.5% by weight encompassed by the claimed 90.5% by weight or more of diopside. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (MPEP section 2144.05). Hence, contrary to applicants’ argument, they fail to constitute special technical feature and there is a lack of unity between the cited claims.
Accordingly, the requirement is still deemed proper and is therefore made FINAL.
3. Claims 11-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 11/19/2025.
Drawings
4. The drawings filed 01/26/2023 are objected to for the following reason:
The drawings are labeled “FIGURE 1” and “FIGURE 2”. Thus, in light of MPEP section 507, which states “Each figure must be labeled ‘Fig.’ with a consecutive Arabic numeral (1, 2, etc.) or an Arabic numeral and capital letter in the English alphabet (A, B, etc.)”, the applicants are advised to change to “Fig. 1” and “Fig. 2”, respectively. See also 37 CFR 1.84(u)(1).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
5. Claims 1, 3, 10 and 19-20 are objected to because of the following informalities:
As to Claim 1: The applicants are advised to add the term “and” after the claimed phrase “90.5 weight % or more diopside;”.
As to Claim 3: The applicants are advised to delete the claimed term “further” after the phrase “wherein the composition” since the cristobalite, quartz, or cristobalite and quartz and their particular amount are referring to “the balance being other mineral and unavoidable impurities” recited in claim 1, on which claim 3 depends from, as explained in paragraphs [0086] and [0106] of applicants’ published application, i.e., US PG PUB 2023/0265017.
As to Claim 10: The applicants are advised to replace the claimed phrase “A paint composition; or, an ink composition; or, a filtration medium; or, a ceramic composition; or, a dental composition; or, a biomedical composition; or, an implant material; or, a fuel cell; or a nuclear waste immobilization composition; comprising the synthetic mineral composition of claim 1” with the new phrase “A paint composition, an ink composition, a filtration medium, a ceramic composition, a dental composition, a biomedical composition, an implant material, a fuel cell, or a nuclear waste immobilization composition, comprising the synthetic mineral composition of claim 1.”
As to Claim 19: The applicants are advised to add the term “and” after the claimed phrase “from -0.3 to +0.3 (a);”.
As to Claim 20: The applicants are advised to add a comma (,) after the claimed phrase “further comprises a resin”.
Appropriate corrections are required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
6. Claims 7 and 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to Claim 7: It recites, among other things, “(in the form of a grit)” and “(in the form of a flour”). Thus, it is not clear from the claim or the present specification whether claim 7 requires the limitations surrounded by the parenthesis. For purposes of prior art rejections, the limitations surrounded by parenthesis will be interpreted as optional language.
As to Claim 19: It recites a trademark, specifically, “HunterLabTm Miniscan XE Plus”. However, if the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of the 35 U.S.C. 112(b) (see MPEP section 2173.05 (u)). Moreover, since the trademark recited in claim 19 is not further defined in the present specification, it is not clear what the trademark is referring to. Additionally, it is not clear whether “the CIELAB colorimetric properties” are referring to the colorimetric parameters recited earlier in claim 19, or something new/additional.
Clarification in the next response by applicants will be helpful to better ascertaining the scope of these claims.
Accordingly, the scope of these claims is deemed indefinite.
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.
7. Claims 1-3, 5-7, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Wuhrer (US 3,926,647)1.
The claims are directed to a synthetic mineral composition, comprising particular amount of diopside and the balance being other minerals and unavoidable impurities.
According to paragraph [0065] of applicants’ published application, i.e., US PG PUB 2023/0265017, the claimed “unavoidable impurities” refers to components present in a composition which do not affect the properties of the composition. Paragraph [0065] of US PG PUB 2023/0265017 further states that the “[u]navoidable impurities are present in a composition at: less than 5 weight %; or, less than 4 weight %; or, less than 3 weight %; or, less than 2 weight %; or, less than 1 weight %; or less than 0.5 weight %; or less than 0.1 weight %.”
As to Claims 1-2, 7, and 10: Wuhrer discloses a synthetic mineral composition comprising diopside (Col. 1, lines 10-30 and Col. 7, lines 50-55). Wuhrer also discloses that their synthetic mineral composition also comprises less than 1.0% by weight of impurities including aluminum oxide (Al2O3) and iron oxide (Fe2O3) (Col. 10, lines 65-69) corresponding to the claimed balance of being other minerals and unavoidable impurities (which according to applicants include less than 1 weight % of unavoidable impurities). Wuhrer further discloses that their synthetic mineral composition has a particle size distribution with a minimum particle size of 0.2 mm (which is equivalent to 200 µm) and maximum particle size of 0.5 mm (which is equivalent to 500 µm) (Col. 5, lines 40-50 and Col. 10, lines 55-65) as required by claim 7. Additionally, Wuhrer discloses that their composition is used in ceramic products (Col. 1, lines 10-50), corresponding to the ceramic composition recited in claim 10.
However, Wuhrer does not mention 90.5 weight % or more diopside or 91 weight % or more diopside required by claims 1 and 2 with sufficient specificity to constitute anticipation within the meaning of 35 USC 102.
Nevertheless, Wuhrer do disclose using, for example, 90% by weight of diopside in its synthetic mineral composition for use in ceramic products (Col. 1, lines 10-30 and Col. 7, lines 50-55). The amount “90% by weight” of diopside taught by Wuhrer is close to 90.5% encompassed by the claimed 90.5% by weight or more diopside and 91% by weight encompassed by the claimed 91% by weight or more diopside. Wuhrer further teaches that the diopside is known to be especially valuable in the ceramics industry (Col. 1, lines 10-50).
Therefore, it would have been obvious to one of ordinary skill in the art to use the amount of diopside suggested by Wuhrer, which is close to the claimed amounts, in the synthetic mineral composition, with a reasonable expectation of successfully using the same for ceramic products since diopsides are known to be especially valuable in the ceramics industry. Additionally, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties.” Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (MPEP section 2144.05).
As to Claims 3 and 5-6: Wuhrer discloses that the cristobalite is present in an amount of up to 4% by weight in the synthetic mineral composition (Col. 4, lines 5-10), which overlaps with less than 3.0 weight % of cristobalite recited in present claim 3. Wuhrer also discloses that their synthetic mineral composition also comprises less than 1.0% by weight of impurities including aluminum oxide (Al2O3) and iron oxide (Fe2O3) (Col. 10, lines 65-69), which overlaps with the claimed less than 0.5 weight % of Fe2O3 and less than 5 weight % Al2O3. See MPEP section 2144.05 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion of the range taught in the prior art and the range claimed by the applicant has been held to be a prima facie case of obviousness.).
8. Claims 4 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Wuhrer (US 3,926,647) as applied to claims 1-3, 5-7, and 10 above, and further in view of Martin et al. (WO 2017/055736; utilized US 2019/0055133 as its English equivalent).
It is noted that Martin et al. (WO 2017/055736) is used for date purposes only, and all paragraph numbers cited below refer to its English equivalent, namely US 2019/0055133 since WO 2017/055736 is in French.
The disclosure with respect to Wuhrer in paragraph 7 is incorporated here by reference. However, Wuhrer does not specify its synthetic mineral composition as being white or near white in color as required by claim 4. Paragraph [0062] of applicants’ published application, i.e., US PG PUB 2023/0265017, refers the claimed “near white” to a color expressed using CIELAB color space coordinate in which the “near white” has the CIELAB color space coordinates from 90 to below 100 (L), from −0.05 to +0.5 (a), from 0 to 4 (b). Wuhrer also do not specify its mineral composition having the particular CIEBLAB colorimetric properties required by claim 19.
Nevertheless, Martin et al. teach the addition of white coloring particles to produce synthetic mineral based compositions having advantageously white color and using the same for ceramics (Paragraphs [0001], [0047], [0075], and [0157]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ an optimum or workable amount of the white coloring particles taught by Martin et al. to the synthetic mineral composition of Wuhrer, with a reasonable expectation of successfully achieving desired colorimetric properties, including those claimed, and using the same for ceramics. Additionally, the claimed color properties would have naturally followed from the suggestion of Wuhrer and Martin et al. since they collectively suggest the claimed mineral composition for the reasons set forth above. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
9. Claim 8-9 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over An et al. (WO 2019/027138; utilized US 2020/0123057 as its English equivalent) in view of Wuhrer (US 3,926,647)2.
It is noted that An et al. (WO 2019/027138) is used for date purposes only, and all paragraph numbers cited below refer to its English equivalent, namely US 2020/0123057 since WO 2019/027138 is in Korean.
As to Claims 8 and 20: An et al. disclose an engineered stone (corresponding to the claimed synthetic stone) (Paragraph [0001]), comprising a resin matrix (Paragraph [0010]). An et al. also disclose that the resin matrix is used in an amount of 5-20 wt. % (Paragraph [0011]), which is inclusive of 8-20 weight % of a resin recited in claim 20.
While An et al. disclose using 40-94 wt. % of any minerals in its engineered stone (synthetic stone) (Paragraphs [0016]-[0018], [0036] and [0041]), they do not specify them as including the synthetic mineral composition comprising particular amount diopside and the balance being other minerals and unavoidable impurities as recited in the claims.
Nevertheless, Wuhrer discloses a synthetic mineral composition having sufficiently high quality and purity, comprising diopside (Col. 1, lines 10-30 and Col. 7, lines 50-55). Wuhrer also discloses that their synthetic mineral composition also comprises less than 1.0% by weight of impurities including aluminum oxide (Al2O3) and iron oxide (Fe2O3) (Col. 10, lines 65-69) corresponding to the claimed balance of being other minerals and unavoidable impurities (which according to applicants include less than 1 weight % of unavoidable impurities). Wuhrer further discloses using, for example, 90% by weight of diopside in its synthetic mineral composition for use in ceramic products (Col. 1, lines 10-30 and Col. 7, lines 50-55). The amount “90% by weight” of diopside taught by Wuhrer is close to 90.5% encompassed by the claimed 90.5% by weight or more diopside and 91% by weight encompassed by the claimed 91% by weight or more diopside. Wuhrer further teaches that the diopside is known to be especially valuable in the ceramics industry (Col. 1, lines 10-50). A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties.” Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (MPEP section 2144.05).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to use the claimed particular synthetic mineral composition taught by Wuhrer in the engineered stone (synthetic stone) of An et al., with a reasonable expectation of successfully obtaining desired purity.
As to Claim 9: An et al. do not specify its engineered stone (synthetic stone) being white or near white as required by claim 9. Paragraph [0062] of applicants’ published application, i.e., US PG PUB 2023/0265017, refers the claimed “near white” to a color expressed using CIELAB color space coordinate in which the “near white” has the CIELAB color space coordinates from 90 to below 100 (L), from −0.05 to +0.5 (a), from 0 to 4 (b). However, An et al. do disclose that its engineered stone (synthetic stone) may be produced in a single color or can have a variety of colors depending on the types of color pigments used and such color pigments include white pigments (Paragraphs [0003] and [0052]). Thus, it would have been obvious to one of ordinary skill in the art to add an optimum or workable amount of the white pigments for the purposes of producing engineered stone with desired colors including the claimed white color as suggested by An et al. Additionally, the claimed white color property would have naturally followed from the suggestion of An et al. and Wuhrer since they collectively suggest the claimed engineered stone for the reasons set forth above. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
Correspondence
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)-270-5456. The examiner can normally be reached 8-5 PM; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 01/26/2023.
2 Cited in the IDS submitted by applicants on 01/26/2023.