DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 1-4, 6-17, & 22-25 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.
Claim 1: Claim 1 recites the limitation “biologically based” which renders the claim indefinite because one of ordinary skill in the art would not be able to determine the metes and bounds of the limitation.
Claim 6: Claim 6 recites the limitation “plant oil-based” which renders the claim indefinite because one of ordinary skill in the art would not be able to determine the metes and bounds of the limitation.
Claim 8: Regarding claim 8, the phrase "including" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 9: Regarding claim 9, the phrase "including" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 10: Regarding claim 10, the phrase "including" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 11: Regarding claim 11, the phrase "including" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 2-4, 6-17, & 22-25: Claims 2-4, 6-17, & 22-25 are rejected as being indefinite because they depend from a rejected claim and do not remedy the issues in the claims from which they depend from.
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 1-4, 6-13, 16, 17, 22, 24, & 25 are rejected under 35 U.S.C. 103 as being unpatentable over Fraser et al. (US PG Pub 2009/0131571; hereafter ‘571) in view of Voronov et al. (US PG Pub 2017/0226050; hereafter ‘050) and Onuoha (International Journal of Scientific Engineering and Applied Science (IJSEAS) – Volume-3, Issue-4, April 2017; ISSN: 2395-3470; hereafter Onuoha).
Claim 1: ‘571 is directed towards a process for producing hydrophobic and reactive inorganic fillers (title & abstract), comprising the steps of:
providing a filler having a defined surface area (see abstract);
mixing the filler with a solution of a reactive compound in a mixing assembly (see abstract & ¶s 133-174);
evacuating the hydrophobized and activated inorganic filler in a storage bag box, drum, or directly in the casting compound (¶ 174).
‘571 does not teach the claimed concentration of the filler.
However, it would have been obvious to one of ordinary skill in the art at the time of filing to use the filler at the claimed concentration because generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
‘571 does not teach the claimed mixing speed or time.
However, speed and time of mixing are result effective variables based on the desired degree of mixing and it is obvious to optimize the speed and time of mixing to obtain the desired result.
"Where 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 MPEP 2144.05(II)(B).
‘571 teaches reacting methyl methacrylate to form the hydrophobized and activated filler (see abstract & ¶ 174).
‘571 does not teach using a biologically based reactive compound.
However, ‘050, which is directed bio-based acrylic monomers (title & abstract) discloses that said acrylic monomers can be used directly in the production of plastics and thermoplastics (¶ 6) as substitutes for petroleum-based monomers (¶ 6). ‘050 further notes that the bio-based acrylic monomers are more environmentally friendly (¶ 71).
It would have been obvious to one of ordinary skill in the art at the time of filing to substitute the bio-based acrylic monomers of ‘050 for the acrylic monomers of ‘571 because they are art recognized alternatives to the petroleum-based acrylic monomers of ’571 which would have predictably produced the same desired product which is also more environmentally friendly.
‘571 teaches an average weighted particle size of less than 400nm (abstract).
‘571 does not teach that the particle size is 1-2000µm.
However, Onuoha teaches that particle size in polymeric composites is a result effective variable based on the desired mechanical properties (see title & abstract).
It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the particle size because it is a result effective variable based on desired mechanical properties. "Where 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 MPEP 2144.05(II)(B).
Additionally, it would have been obvious to one of ordinary skill in the art at the time of filing to use particles with a size in the range of 1-2000µm because it is prima facie obvious to change shape and size. See MPEP §2144.04(IV)(A)&(B).
Claim 2: The filler is SiO2 (¶ 36).
Claims 3 & 22: As noted above, ‘571 teaches silica as the filler. Claim 1 recites inorganic or organic fillers and claim 3 is contingent on the selection of organic fillers which is an optional choice and therefore the combination renders obvious the claim. See MPEP § 2111.04.
Claim 4: The inorganic and organic fillers are used in the desired mixing ratio.
Claim 6: ‘050 teaches that the hydrophobizing and activating, biologically based reactive compound is represented by:
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131
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(see ¶ 10) wherein the fatty chain is form a plant or animal oil or fat (¶ 11).
Claim 7: The compound is dissolved in at least one monomer present in the polymer matrix of the molding (see ¶ 174).
Claim 8: ‘571 teaches adding methyl acrylate as a dispersant (solvent; ¶s 19-24).
Claim 9: ‘571 teaches adding methyl methacrylate as a dispersant (solvent; ¶s 19-24).
Claim 10: ‘571 teaches adding hexanediol diacrylate as a dispersant (solvent; ¶s 19 & 29).
Claim 11: ‘571 teaches adding hexanediol dimethacrylate as a dispersant (solvent; ¶s 19-24).
Claim 12: The methacryoyl is a reacted product of a plant oil (¶ 11).
Claim 13: The plant oil can be coconut oil (¶ 15).
Claim 16: ‘050 teaches that the hydrophobizing and activating, biologically based reactive compound is represented by:
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131
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(see ¶ 10) wherein the fatty chain is from an animal oil or fat (¶ 11).
Claims 17, 24, & 25: ‘571 does not teach the claimed concentration.
However, it would have been obvious to one of ordinary skill in the art at the time of filing to use the claimed concentration because generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claims 14 & 15 are rejected under 35 U.S.C. 103 as being unpatentable over ‘571 in view of ‘050 and Onuoha as applied above, and further in view of Nava et al. (US PG Pub 2008/0154002; hereafter ‘002).
Claims 14 & 15: ‘050 teaches that any plant oil is suitable (¶ 54).
‘050 does not teach that the plant oil is an essential oil.
However, as noted above, ‘571 & ‘050 are directed towards plastics.
‘002, which is directed towards molding resins using renewable resource components (title) such as monomers comprised of plant or animal oil moieties (abstract) teaches that coffee oil and soybean oil are suitable alternative plant oils for the process (see abstract & ¶ 26).
It would have been obvious to one of ordinary skill in the art at the time of filing to use coffee oil in place of the plant or animal oils because as noted by ‘002 coffee oil is a suitable alternative and it is prima facie obvious to use art recognized alternatives.
The Examiner notes that claim 15 recites coffee oil as an essential oil.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over ‘571 in view of ‘050 and Onuoha as applied above, and further in view of Shin (Food Sci. Anim. Resour. 2019 June 39(3):446~458; hereafter Shin).
Claim 23: ‘050 teaches that any type of animal fat can be used as the animal fat in the process (¶ 58).
‘050 further discloses that the fatty acid used can be oleic acid (¶ 54).
‘050 does not provide a particular source for the oleic acid.
When a primary reference is silent as to a certain detail, one of ordinary skill would be motivated to consult a secondary reference which satisfies the deficiencies of the primary reference.
However, Shin, which is directed towards duck fat (title) discloses that duck fat is a source for oleic acid (see ¶ 2, pg 447).
It would have been obvious to one of ordinary skill in the art at the time of filing to use oleic acid from duck fat because it is a known source and would have predictably been a suitable source.
Response to Arguments
Applicant's arguments filed 4/24/26 have been fully considered but they are not persuasive.
In regards to applicant’s argument the term “biologically based” is well known in the art and is not indefinite, the Office does not find this argument convincing because applicant not provided any evidence of what the art-recognized meaning or the metes and bounds of the term.
Applicant’s arguments, that the combination of ‘571 & ‘050 does not teach the newly amended subject matter of claim 1, have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of ‘571, ‘050, & Onuoha as discussed above teaches that particle size is a known result effective variable in polymeric composites and it is obvious to optimize said particle size.
In regards to applicant’s argument that ‘571 is not directed towards producing a processed filler particle itself but instead a processed filler particle in a casting compound and therefore does not read on the claims; the Office does not find this argument convincing because claim 1, step c) recites evacuating the particle directly in the casting compound which ‘571 teaches.
In regards to applicant’s argument that ‘571 is directed towards particles much smaller than 400 nm and are very different than the claimed particle size; the Office does not find this argument convincing because ‘571 does not teach a specific particle size but instead a weighted average particle size with a distribution (see ¶s 37-40) which is a weighted average distribution of particle size and does not specifically disclose the upper limit of any particle size and given the teachings of Onuoha it is apparent that particle size is a result effect variable in the field for desired results which is prima facie obvious to optimize as discussed above.
In regards to applicant’s argument that ‘571 teaches using the reactive monomers as dispersing agents and not to hydrophobize the filler, the Office does not find this argument convincing because the same process steps are performed with the same materials and one would reasonably presume the same result would be obtained – i.e. mixing said particles with the reactive monomers and the binder would predictably produce particles reacted with said monomers as claimed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759
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