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 .
EXAMINER’S COMMENT
Although claims 18, 33 and 37 were previously listed as being allowable, upon further review and consideration of the Birmingham reference, it was concluded that said claims are rendered obvious by the reference. As a result, the allowability of said claims and some of their dependent claims, where applicable, is hereby withdrawn, and the present Office Action is made Non-Final.
Claim Objections
Claim 49 is objected to because of the following informalities: the comma after “A treated” in line 1 needs to be deleted. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
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 33-37 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.
With respect to claim 33, it is a product claim; however, it contains process step limitation/recitation such as “deposited” in lines 3 and 8, and “forming” a coating in lines 4 and 9. Thus, the claim is found indefinite because it is not clear whether the claim was meant to be a process claim or a product claim.
Claims 34-36 are rejected because of depending from a rejected base claim.
With respect to claim 37, the claim recites process step limitations of “deposited” in lines 3 and 7, and “forming” a coating in line 4. It is unclear as to whether the claim was intended to be a process claim or a product one.
New claims 49-56 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.
With respect to new claim 49, said claim starts with the recitation of “A treated, titanium dioxide pigment” which clearly indicates said claims is intended to be a product claim; however, in line 3, the claim recites, in part, “an organic treating agent deposited on the surface of said titanium dioxide pigment”. Thus, the claim contains a process step. Therefore, it is confusing as to whether claim 49 and its dependent claims, were meant to be product claims or process claims.
With respect to new claim 50, said claim, also, contains a process step at the end of line 1 by reciting, in part, “said organic treating agent is deposited”.
With respect to new claims 51-53, said claims starts with the recitation of “The process of”; however, they, directly or indirectly, depend from product claim 49.
With respect to claims 54-56, said claims 1) starts with the recitation of “The process” even though they directly or indirectly depend from product claim 49. Also, 2) said claims contain process step by having “depositing” terms and/or “depositing” certain layer “prior to” another layer.
Claims 49-56 are found indefinite because it is not clear as to whether they are product claims or process claims.
Claims 51-56 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 51-57 start with the recitation of “The process of”; however, the claims to which they depend from are all product claims. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 18-20, 22, 33-35, 37 and 49-56 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2005/0239921 to Birmingham et al. (hereinafter Birmingham).
With respect to claim 18, Birmingham discloses titanium dioxide particles having a substantially encapsulating layer on their surfaces wherein the substantially
encapsulating layer comprises a pyrogenically-deposited metal oxide, and wherein said substantially encapsulating layer has, on its surface, “at least” one organic surface treatment material selected from a group including materials such as organo-phosphonates, organo-phosphinates, hydrocarbon-based carboxylic acid such as benzoic acid, alkanolamine such as triethanolamine, some other examples, and mixtures thereof (Abstract, [0007], [0017], [0062]-[0099]). The reference, also, recognizes and teaches a method of producing a coated/treated titanium dioxide particles ([0016]-[0062]).
The disclosure on organo-phosphonates is taken to read on the claimed “derivatives of phosphonic acids”, and the organo-phosphinates is taken to read on the claimed “derivatives of phosphinic acids”. Thus, the reference discloses some of the claimed examples of compounds which would read on the claimed “first organic treating agent”. Furthermore, the reference discloses compounds such as glycerol as some suitable examples of organic surface treatment material ([0093]) which is taken to read on the claimed “a first component consisting of at least one polyhydric alcohol” and, as noted above, compounds such as benzoic acid and triethanolamine which read on the claimed “a second component selected grom the group consisting of carboxylic acids and salts thereof, alkanolamines, and combinations thereof”. Thus, the reference discloses some of the examples which would read on the claimed “a second organic treating agent”.
The reference discloses treating titanium dioxide particles with a mixture of organic surface treatment materials ([0100]); also, the reference discloses “While titanium dioxide particles substantially encapsulated with a pyrogenically-deposited metal oxide can be treated with only one organic surface treatment material or mixtures of said material added in a single treatment step, alternative embodiments contemplate subsequent treatment of said titanium dioxide particles with additional organic surface treatment material. Thus, for example, titanium dioxide particles previously treated with one organic surface treatment material can be treated with the same organic surface treatment material repeating the previous treatment method of using another treatment method. Alternatively, a different organic surface treatment material can be added through an identical treatment method or through another treatment method. Treatments beyond one additional treatment are contemplated.” ([0102]). Thus, the reference recognizes and teaches the use of, at least, two surface treating agents containing different materials; thus, the reference is seen to read on the claimed “first organic treating agent” and “second organic treating agent”. In addition, the reference is seen to read on having a first organic surface treatment material layer containing “derivatives of phosphonic acids” or “derivatives of phosphinic acids”, while having a second surface treatment material layer containing a mixture of at least one polyhydric alcohol, e.g. glycerol (i.e. first component), and carboxylic acids, e.g. benzoic acid (i.e. second component).
Moreover, Birmingham discloses the category of organic siloxanes as another suitable category of compound used as organic surface treatment material ([0063] and [0068]); thus, the reference discloses more than one category of compounds which would read on the claimed “first organic treating agent”.
With respect to claim 19, as noted above, Birmingham discloses the use of organo-phosphonates and organo-phosphinates as two examples of category of compounds used in the organic surface treatment material ([0063]); these categories of compounds are seen to read on the claimed “derivatives of phosphonic acid” and “derivatives of alkyl phosphinic acid”. Also, as noted above, the reference recognizes the use of any mixture of any of the combination of the disclosed compounds and the application of more than one organic surface treatment layer, wherein the materials in each layer can be different from another ([0102]). Thus, the reference is seen to render the recitation of claim 19 obvious.
Moreover, Birmingham discloses the category of organic siloxanes as another suitable category of compound used as organic surface treatment material ([0063] and [0068]).
With respect to claim 20, as noted above, Birmingham teaches the use of organo-phosphonates and organo-phosphinates as two examples of category of compounds used in the organic surface treatment material ([0063] and [0085]-[0088]). Birmingham, additionally, discloses “While titanium dioxide particles substantially encapsulated with a pyrogenically-deposited metal oxide can be treated with only one organic surface treatment material or mixtures of said material added in a single treatment step, alternative embodiments contemplate subsequent treatment of said titanium dioxide particles with additional organic surface treatment material. Thus, for example, titanium dioxide particles previously treated with one organic surface treatment material can be treated with the same organic surface treatment material repeating the previous treatment method of using another treatment method. Alternatively, a different organic surface treatment material can be added through an identical treatment method or through another treatment method. Treatments beyond one additional treatment are contemplated.” ([0102]). Thus, it is well within the teachings of the reference to have the first organic surface treatment material of one or more alkyl phosphinic acids (see [0087]-[0088]).
With respect to claim 22, the reference, also, teaches the weight content of the first layer of organic surface treatment is about 0.05-5 wt%, preferably about 0.1-1.5 wt% ([0101]); this is seen to read on the claimed concentration for the claimed “first organic treating agent” of about 0.05-1.0 wt% due to overlapping ranges. MPEP 2144.05 states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to cl aim 33, Birmingham discloses titanium dioxide particles having a substantially encapsulating layer on their surfaces wherein the substantially
encapsulating layer comprises a pyrogenically-deposited metal oxide, and wherein said substantially encapsulating layer has, on its surface, “at least” one organic surface treatment material selected from a group including materials such as organo-phosphonates, organo-phosphinates, hydrocarbon-based carboxylic acid such as benzoic acid, alkanolamine such as triethanolamine, some other examples, and mixtures thereof (Abstract, [0007], [0017], [0062]-[0099]). The disclosure on organo-phosphonates is taken to read on the claimed “derivatives of phosphonic acids”, and the organo-phosphinates is taken to read on the claimed “derivatives of phosphinic acids”. Thus, the reference discloses some of the claimed examples of compounds which would read on the claimed “first organic treating agent”. Furthermore, the reference discloses compounds such as glycerol as some suitable examples of organic surface treatment material ([0093]) which is taken to read on the claimed “a first component consisting of at least one polyhydric alcohol” and, as noted above, compounds such as benzoic acid and triethanolamine which read on the claimed “a second component selected grom the group consisting of carboxylic acids and salts thereof, alkanolamines, and combinations thereof”. Thus, the reference discloses some of the examples which would read on the claimed “a second organic treating agent”.
The reference discloses treating titanium dioxide particles with a mixture of organic surface treatment materials ([0100]); also, the reference discloses “While titanium dioxide particles substantially encapsulated with a pyrogenically-deposited metal oxide can be treated with only one organic surface treatment material or mixtures of said material added in a single treatment step, alternative embodiments contemplate subsequent treatment of said titanium dioxide particles with additional organic surface treatment material. Thus, for example, titanium dioxide particles previously treated with one organic surface treatment material can be treated with the same organic surface treatment material repeating the previous treatment method of using another treatment method. Alternatively, a different organic surface treatment material can be added through an identical treatment method or through another treatment method. Treatments beyond one additional treatment are contemplated.” ([0102]). Thus, the reference recognizes and teaches the use of, at least, two surface treating agents containing different materials; thus, the reference is seen to read on the claimed “first organic treating agent” and “second organic treating agent”. In addition, the reference is seen to read on having a first organic surface treatment material layer containing “derivatives of phosphonic acids” or “derivatives of phosphinic acids”, while having a second surface treatment material layer containing a mixture of at least one polyhydric alcohol, e.g. glycerol (i.e. first component), and carboxylic acids, e.g. benzoic acid (i.e. second component).
Moreover, Birmingham discloses the category of organic siloxanes as another suitable category of compound used as organic surface treatment material ([0063] and [0068]); thus, the reference discloses more than one category of compounds which would read on the claimed “first organic treating agent”.
With respect to claim 34, as noted above, Birmingham discloses the use of organo-phosphonates and organo-phosphinates as two examples of category of compounds used in the organic surface treatment material ([0063]); these categories of compounds are seen to read on the claimed “derivatives of phosphonic acid” and “derivatives of alkyl phosphinic acid”. Also, as noted above, the reference recognizes the use of any mixture of any of the combination of the disclosed compounds and the application of more than one organic surface treatment layer, wherein the materials in each layer can be different from another ([0102]). Thus, the reference is seen to render the recitation of claim 34 obvious.
Moreover, Birmingham discloses the category of organic siloxanes as another suitable category of compound used as organic surface treatment material ([0063] and [0068]).
With respect to claim 35, as noted above, Birmingham teaches the use of organo-phosphonates and organo-phosphinates as two examples of category of compounds used in the organic surface treatment material ([0063] and [0085]-[0088]). Birmingham, additionally, discloses “While titanium dioxide particles substantially encapsulated with a pyrogenically-deposited metal oxide can be treated with only one organic surface treatment material or mixtures of said material added in a single treatment step, alternative embodiments contemplate subsequent treatment of said titanium dioxide particles with additional organic surface treatment material. Thus, for example, titanium dioxide particles previously treated with one organic surface treatment material can be treated with the same organic surface treatment material repeating the previous treatment method of using another treatment method. Alternatively, a different organic surface treatment material can be added through an identical treatment method or through another treatment method. Treatments beyond one additional treatment are contemplated.” ([0102]). Thus, it is well within the teachings of the reference to have the first organic surface treatment material of one or more alkyl phosphinic acids (see [0087]-[0088]).
With respect to claim 37, Birmingham discloses titanium dioxide particles having a substantially encapsulating layer on their surfaces wherein the substantially
encapsulating layer comprises a pyrogenically-deposited metal oxide, and wherein said substantially encapsulating layer has, on its surface, at least one organic surface treatment material selected from a group including materials such as hydrocarbon-based carboxylic acid such as benzoic acid, which reads on the claimed "second component", an alkanolamine such as triethanolamine, which also reads on the claimed "second component", a few more materials and mixtures thereof (Abstract, [0007], [0017], [0062]-[0063], [0097]). Thus, the reference discloses some examples of the claimed first and second components of the claimed “second organic treating agent”. The reference, additionally, discloses the use of other components such as citric acid ([0098]). Birmingham, also, discloses the use of compounds such as erythritol, mannitol and glycerol and a few more ([0093] and [0097]) in the organic surface treatment material; therefore, the reference discloses some of the materials of the claimed “first organic treating agent” as well. It is noted that the materials disclosed as used in the organic surface treatment may be used in mixtures (Abstract, [0007], [0017]).
The reference discloses treating titanium dioxide particles with one organic surface treatment material, and then treating it with either the same or different organic surface treatment material ([0102]). Thus, the reference recognizes and teaches the use of two surface treating agents containing different materials; thus, the reference is seen to read on the claimed “first organic treating agent” and “second organic treating agent”. Considering the fact that the reference teaches materials such as benzoic acid and glycerol ([0092]-0093]) and the fact that the reference is open to the use of a mixture of materials used in organic surface treatment layers ([0100]), the reference is seen to render a “second organic treating agent” comprising a first component consisting of at least one polyhydric alcohol, e.g. glycerol, and a second component selected from the group consisting of materials such as carboxylic acids, e.g. benzoic acid, obvious.
The reference, also, teaches the weight content of the first layer of organic surface treatment is about 0.05-5 wt%, preferably about 0.1-1.5 wt% ([0101]); this is seen to read on the claimed concentration for the claimed “first organic treating agent” of about 0.05-1.0 wt% due to overlapping ranges. MPEP 2144.05 states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Allowable Subject Matter
Claims 13 and 42-48 are allowed.
The following is an examiner’s statement of reasons for allowance: the prior art do not disclose or suggest the cumulative limitations of claim 13. Although Birmingham discloses the concentration for the first organic surface treatment layer and the second organic surface treatment layer ([0101 and [0103]), said reference does not disclose the concentration of glycerol (first component) and benzoic acid (second component) individually.
Claims 21 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and upon addressing the rejections over the base claim.
The following is a statement of reasons for the indication of allowable subject matter: the prior art do not disclose or suggest the cumulative limitations of claims 18 and 21 with particular attention to the “first organic aid is bis(2,4,4-trimethylpentyl) phosphinic acid.
Claim 36 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action, which is because of its dependency on claim 33, and to include all of the limitations of the base claim and any intervening claims, and upon addressing the rejections over the base claim.
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731
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