DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/07/2026 has been entered.
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.
Claims 48-53 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. In this case, claim 48 recites “wherein the product is paper, paint, a coating, a thermoplastic resin, a thermoset resin, a thermoplastic polymer, rubber, food, a food packaging, a cosmetic, a pharmaceutical, concrete, a mortar, a masterbatch, a dry blend, or a granulate”, such recitation is indefinite in that it fails to point out what is included or excluded by the claim language. This claim is an omnibus type claim. In other words, one of ordinary skill in the art is uncertain besides the miner material, what other components being included in such product to make a list of such generic named product such as paper, pain, coating…… or a granulate”. Therefore, such limitations render claim indefinite and all claim 48’s depending claims are rejected for similar reasons.
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 32-43, 45-50 and 52-55 are rejected under pre-AIA 35 U.S.C. 103(a) as obvious over Delfosse (US5292365) in view of Gane (WO2010/023144).
Delfosse teaches mineral filler or pigment material having average particle size (i.e. D50) in the range of 0.4 to 1.5 µm (col. 7 lines 35-39, claim 1), the top cut between 4 and 7 µm (claim 8, col. 7 lines 40-43, col. 8 lines 6-15). Delfosse discloses such mineral material (natural calcium carbonate) can be natural calcite, limestone, white marble (col. 2 lines 7-11). Since Delfosse also teaches the top cut between 4 and 7 µm (claim 8), which means 100% of particle (apparently 98% of particles i.e. D98) having size in such range (col. 7 lines 40-43, col. 8 lines 6-15).
Delfosse disclosed average particle size and D98 particle size overlapping with those of instantly claimed, thus renders a prima facie case of obviousness (see MPEP 2144. 05 I).
Delfosse also teaches average particle diameter and particle size distribution are particularly important for the properties of the paper fillers and coating pigments (col. 7 lines 25-39), hence it would have been obvious for one of ordinary skill in the art to adopt a median particle diameter of 0.6 to 0.9 µm as that of instantly claimed via optimization (see MPEP §2144. 05 II) for help obtaining mineral filler or pigment material providing desired opacity and mechanic properties to paper fillers and coating pigments as suggested by Delfosse (col. 7 lines 25-39).
As for the claimed “ wherein the calcium carbonate after grinding in step a) and before optional treatment in step d) has a BET/N2 specific area being from 3 m2/g to 13 m2/g (or from 8m2/g to 13 m2/g in claim 37), it appears to one of ordinary skill in the art whether such BET/N2 specific area is only a BET/N2 specific area for one of the intermediate product during the process of forming such mineral material after grinding step a) and before step d), but it is not BET/N2 specific area for the instantly claimed miner material, hence, such limitation cannot render the claimed mineral material patent distinct. In arguendo about such BET/N2 specific area being the formed final mineral material’s BET/N2 specific area, Delfosse further teaches the calcium carbonate having specific surface area 6 to 13 m2/g (claim 6, 7), wherein such BET specific surface area range overlapping with or close enough to that of instantly claimed thus renders a prima facie case of obviousness (see MPEP §2144. 05 I).
Regarding claim 32, Delfosse does not expressly teach surface treating the mineral material obtained with at least one aliphatic carboxylic acid comprises decanoic acid, undecanoic acid, lauric acid, tridecanoic acid, myristic acid, pentadecanoic acid, palmitic acid, heptadecanoic acid, stearic acid, nonadecanoic acid, arachidic acid, heneicosytic acid, behertic acid, lignoceric acid, or any mixtures thereof.
Gane teaches a mineral filler material (e.g. calcium carbonate) can be surface treated with at least one at least one saturated C8 to C24 aliphatic carboxylic acid, especially stearic acid and/or palmitic acid and/or myristic and/or lauric acid or mixture thereof (page 9 lines 10-20, page 10 lines 15-24, page 11 line 30-page 12 line 7).
It would have been obvious for one of ordinary skill in the art to adopt such aliphatic carboxylic acid as shown by Gane to surface treatment the calcium carbonate material because by doing so can help provide a treated miner filler material with improved surface characteristics, e.g. a high volatile onset temperature etc. for intended application in plastic as suggested by Gane (page 2 line 20-page 3 line 12). Furthermore, adopting such well-known technique of aliphatic carboxylic acid surface treatment to a well-known calcium carbonate mineral material for improvement would have predictable results (see MPEP §2143 KSR).
As for the claimed process steps a), b), c), d) and e), these are product by process limitations, “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” (See MPEP § 2113). In this case, Delfosse in view of Gane already discloses a same or substantially the same carboxylic acid treated mineral material which is same or substantially the same as that of instantly claimed as discussed above. Furthermore, as for the recited step e) of de-agglomerating, such de-agglomerating is a well-known step used to obtain desired particle size while Delfosse already teaches certain particle size distribution is desired for calcium carbonate intended applications (see col. 8 lines 1-34), it would have been obvious for one of ordinary skill in the art to adopt a de-agglomerating or grinding step after surface treatment for help obtaining treated calcium carbonate with desired particle size for intended applications because applying a known technique of de-agglomerating to a known method of obtaining carboxylic acid treated calcium carbonate for improvement (e.g. desired particle size for intended application) would yield predictable results (see MPEP §2143 KSR).
Regarding claim 33-37 and 45, Delfosse in view of Gane already teaches such limitations as discussed above.
Regarding claim 38 and 40-43,46-47, Delfosse in view of Gane already teaches a same or substantially the same mineral material as discussed above. As for the claimed process step limitations, please see similar remarks as stated above. As for the recited the process does not include dispersant, acrylic additives, polyphosphates or grinding aid additives, Delfosses does not require such material present in the mineral material at all.
Regarding claim 39, Delfosse also teaches the top cut between 4 and 7 µm (claim 8), which means 100% of particle (apparently 98% of particles i.e. D98) having size in such range (col. 7 lines 40-43, col. 8 lines 6-15). Delfosse also discloses top cut less than 7 µm is necessary to achieve perfect smoothness and good gloss in the coated paper (col. 8 lines 12-15). It would have been obvious for one of ordinary skill in the art to adopt a top cut D98 from about 2.5 to about 4 µm as that of instantly claimed via routine optimization (see MPEP §2144.05 II) for help obtaining a calcium carbonate material providing perfect smoothness and good gloss in the coated paper as suggested by Delfosse (col. 8 lines 12-15).
Regarding claim 48 as for the claimed “a product being paper, paint, a coating etc.”, such recitation does not require any additional structural limitation except the mineral material in claim 1. Delfosse further discloses paper using such mineral fillers the natural calcium carbonate being used as paper coating and paint (col. 1 lines 12-31) while Gane teaches such filler material can be used as plastics (page 2 last line). Therefore, applied reference teaches same product as paper, paint, or plastic as that of instantly claimed.
Regarding claim 49-50, Gane also teaches using the mineral filler in plastic application, specifically polypropylene or polyethylene. Since Gane teaches a same or substantially the same polyolefin, e.g. polypropylene or polyethylene, same or substantially the same thermoplastic is expected. It would have been obvious for one of ordinary skill in the art to obtain a product comprising thermoplastic polymer comprising polyolefin (specifically homopolymers and/or copolymers of polypropylene and polyethylene because choosing such thermoplastic polymer comprising homopolymers and/or copolymers of polypropylene obtain a desired plastic product is obvious choice for one of ordinary skill in the art.
Regarding claim 52, Delfosse in view of Gane already teaches a same or substantially the same product, therefore, a same or substantially the same charpy impact strength as that of instantly claimed is expected.
Regarding claim 53, as for the claimed “product is incorporated into a window profile …”, such limitation is just an intended use for the instantly claimed product and such limitation does not render the instantly claimed product containing mineral material patentable distinct as compared to prior art disclosed product.
Regarding claim 54-55, Gane further teaches using palmitic and stearic mixture, specifically with weight ratio of 1:1 ( example 5-8, 10, table 1, page 12 lines 19-21).
Claims 49-50 and 51-52 are rejected under pre-AIA 35 U.S.C. 103(a) as obvious over Delfosse (US5292365) in view of Gane (WO2010/023144) as applied above, and further in view of Chevalier (US2009/0318614).
Regarding claim 49-50, in arguendo about Delfosse in view of Gane not expressly teaching polyolefin being thermoplastic, it is well-known in the art that mineral filler material (e.g calcium carbonate) can be used in a wide variety of plastics, such as thermoplastic polypropylene or polypropylene copolymer or polyethylene, polyvinyl chloride (PVC) wherein the treated filler or pigment can form from 1 or 2% up to 80 or 90% by weight of the composition comprising (such thermoplastic polyolefin or PVC) as shown by Chevalier (para. [0020],[0025]).
It would have been obvious for one of ordinary skill in the art to adopt such well-known thermoplastic polypropylene, polypropylene copolymer or use such content of thermoplastic PVC as shown by Chevalier to modify the plastic product of Delfosse in view of Gane because adopting such well-known technique of using such thermoplastic polypropylene, polypropylene copolymer or such content of thermoplastic PVC for help modifying a well-known plastic comprising such polymer material and surface treated mineral material for improvement would have predictable results (see MPEP §2143 KSR).
Regarding claim 51, such limitation has been met as discussed above.
Regarding claim 52, Delfosse in view of Gane and Chevalier already teaches a same or substantially the same product, therefore, a same or substantially the same charpy impact strength as that of instantly claimed is expected.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 32-43 and 45-53 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-19 of U.S. Patent No. 11555122. Although the claims at issue are not identical, they are not patentably distinct from each other because US’122 teaches (e.g. see claim 1) teaches a same or substantially the same mineral material obtained same or substantially the same wet grinding, up-concentrating, drying, surface treating while US’122 claim 12 further defines the specific carboxylic acid as that of instantly claimed.
Claim 54 and 55 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-19 of U.S. Patent No. 11555122 as applied above, and in view of Gane (WO2010/023144). US’122 teaches a same or substantially the same mineral material obtained by a substantially the same process, except the aliphatic carboxylic acid being the claimed palmitic and stearic acid mixture, but such limitations have been taught by Gane as discussed above. It would have been obvious for one of ordinary skill in the art to adopt such palmitic and stearic mixture with weight ratio of 1:1 as shown by Gane to surface treatment the calcium carbonate material of US’122 because by doing so can help provide a treated filler material comprising calcium carbonate with improved characteristics, e.g. a high volatile onset temperature etc. for intended application in plastic as suggested by Gane (page 2 line 20-page 3 line 12).
Furthermore, adopting such well-known aliphatic carboxylic acid to surface treat a well-known calcium carbonate for improvement would have predictable results (see MPEP §2143 KSR).
Response to Arguments
Applicant’s arguments filed on 06/07/2026 have been fully considered but are moot in view of current rejections. It is noted that the third IDS filed on 03/03/2023 has been considered and attached hereof. In response to applicant’s arguments about double patenting rejections, it is noted that US’122 claims teach a same or substantially the same claimed subject matter and applicant has not demonstrated how US’122 disclosed subject matter being patentable distinct as that of instantly claimed endeavor. Therefore, such arguments are not found convincing.
Conclusion
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/JUN LI/ Primary Examiner, Art Unit 1732
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