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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-19, in the reply filed on June 30, 2026, is acknowledged.
Claims 20-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 30, 2026.
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 4 and 5 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 4 recites the limitation "the sulfate process". There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the chloride process". There is insufficient antecedent basis for this limitation in the claim.
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.
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 1-3 and 6-18 are rejected under 35 U.S.C. 103 as being unpatentable over Birmingham et al (U.S. Patent Publication No. 2005/0239921) in view of Volkers et al (U.S. Patent # 8,883,878).
In the case of claim 1, Birmingham teaches a process for producing a treated inorganic pigment in the form of a titanium oxide particle encapsulated with at least one organic surface treatment material (Abstract). The process of Birmingham comprised providing a plurality of inorganic pigment/titanium dioxide particles and depositing an organic treating agent on the surface of the particles (Pages 1-2 Paragraph 0015-0017).
Birmingham teaches that suitable organic surface treatment materials included organo-siloxanes including polydimethylsiloxane (PDMS) and polymethylhydrosiloxane (PMHS) (Page 5 Paragraphs 0068-0069), which is the same as PHMS. Though Birmingham teaches having deposited PHMS or PDMS on the surface of the particles Birmingham does not teach that the organic treating agent was either a PHMS/PDMS copolymer or a combination of a PHMS/PDMS copolymer and a neat PHMS polymer. However, Birmingham teaches that the treated titanium dioxide particles were used as pigments/filler in thermoplastics (Page 8 Paragraph 0105 and 0106).
Volkers teaches a thermoplastic composition comprising titanium dioxide coated with a silicone or siloxane (Abstract). Volkers teaches that the titanium dioxide was coated with an organic surface treatment including a PMHS/PDMS copolymer (Column 16 Lines 19-67).
Based on the teachings of Volkers, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have used a PHMS/PDMS copolymer as the organic surface treatment material of Birmingham because a PHMS/PDMS copolymer was a known organo-siloxane coating for titanium dioxide particles used as filler in thermoplastics.
As for claims 2 and 3, Birmingham teaches that the particles were pigment titanium dioxide particles produced during the process by using commercial scale equipment (Page 10 Paragraph 0128).
As for claim 6, Volkers teaches that the organo-hydrosiloxane/PMHS comprised at least 10 wt% of the copolymer (Column 16 Lines 47-52), which overlapped with the claimed ranges. 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). See section 2144.05.I of the MPEP.
As for claim 7, as was discussed previously, the organic treating agent was PHMS/PDMS copolymer.
As for claims 8 and 9, Birmingham teaches that the organic surface treatment was present on the particles in the amount of about 0.05 to about 5 wt% (Page 16 Claims 7), which overlapped with the claimed range and as was discussed previously overlapping ranges are prima facie obvious.
Birmingham does not teach that the pack bulk density of the treated pigment was in the range of about 0.55 to about 0.63 g/cc. However, 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). See MPEP section 2144.05.II.A.
Furthermore, Birmingham teaches that packed/tapped bulk density was a relevant process parameter affecting the throughput of the process (Page 15 Paragraphs 0146-0147).
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined an optimal packed bulk density of the treated, inorganic pigments of Birmingham in view of Volker through routine experimentation because the bulk density affected the throughput of the process.
As for claims 10 and 11, as was discussed previously, it would have been obvious to have deposited PHMS/PDMS copolymer on the particles of Birmingham. Furthermore, Birmingham taught having deposited PHMS on the surface of the particles. Birmingham does not teach having deposited a combination of a PHMS/PDMS copolymer and neat/non-copolymer PHMS polymer on the particles.
However, Birmingham teaches that mixtures of organic surface treatment materials were deposited onto the particles (Page 7 Paragraph 0100). Furthermore, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP section 2144.06.
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have used as an organic treating agent in the method of Birmingham in view of Volkers a combination of a PHMS/PDMS copolymer and neat/non-copolymer PHMS polymer because these were two known organic surface treating agents for titanium dioxide particles and therefore one of ordinary skill would have a reasonable expectation of success in combining them.
Furthermore, as was discussed previously in the rejection of claim 8, Birmingham taught an organic treating agent concentration range which overlapped with the claimed ranges and overlapping ranges are prima facie obvious.
As for claim 12, Birmingham teaches that prior to depositing the organic treating agent the titanium dioxide particles were formed into a slurry and filtered into a filter cake followed by mixing the organic treating agent with the filter cake (Pages 2-3 Paragraphs 0030-0035).
As for claims 13-15, Birmingham teaches that prior to depositing the organic treating agent an inorganic treating agent in the form of a pyrogenic metal oxide was deposited on to the particles and then the organic treating agent was deposited onto the metal oxide layer encapsulating the particles (Page 4 Paragraphs 0059-0062).
In the case of claims 16 and 17, they are rejected for the same reasons discussed previously in the rejection of claim 1. Furthermore, Birmingham teaches that prior to depositing the organic treating agent an inorganic treating agent in the form of a pyrogenic metal oxide was deposited onto the particles to form an encapsulation layer (Page 4 Paragraphs 0059-0061).
As for claim 18, it is rejected for the same reasons as were discussed previously in the rejection of claim 10.
Claims 4, 5 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Birmingham et al in view of Volkers et al as applied to claims 3 and 16 above, and further in view of Morrison, Jr. et al (U.S. Patent # 7,186,770).
The teachings of Birmingham in view of Volkers as they apply to claims 3 and 16 have been discussed previously and are incorporated herein.
In the case of claims 4 and 5, Birmingham does not teach that the titanium dioxide particles were produced by either a sulfate process or a chloride process. Birmingham does teach that the titanium dioxide particles were rutile particles (Page 4 Paragraph 0061).
Morrison teaches a method for forming rutile titanium dioxide particles wherein the particles were formed by either a chloride or a sulfate process (Abstract).
Based on the teachings of Morrison, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have formed the titanium dioxide particles of Birmingham in view of Volkers by either a chloride or a sulfate process because these were known processes in the art for forming rutile titanium dioxide particles.
As for claim 19, as was discussed previously in the rejections of claims 13-16, Birmingham taught having formed on the titanium dioxide particles a metal oxide coating followed forming the particles into a slurry which was filtered into a filter cake and then mixed with the organic treating agent. However, Birmingham did not teach that while in a slurry the inorganic treating agent was precipitated onto the titanium dioxide particles.
Morrison teaches that the titanium dioxide particles/pigments were finished in a wet treatment wherein metal oxide was precipitated onto the particles (Column 9 Line 55 through Column 10 Line 3).
Based on the teachings of Morrison, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have formed the titanium dioxide particles of Birmingham in view of Volkers into a slurry and precipitated the metal oxide coating on the particles because this was a known coating method in the art for depositing metal oxide onto a titanium dioxide particle.
Conclusion
Claims 1 through 19 have been rejected. Claims 20 through 27 have been withdrawn. No claims were allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at (571)272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712
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