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 .
Applicant has amended the claims moving dependent claim limitations into the independent claim and adding a new limitation not previously considered. The amendments in conjunction with the remarks filed 12/11/2025 overcome the previous rejection under section 112. The amendments in conjunction with the remarks filed 12/11/2025 overcome the rejection under section 102; however, rejections under section 103 citing to the same prior art are now below recited.
The remarks filed 12/11/2025 are not persuasive for the reasons below set forth.
Claim Objections
Claim 16 is objected to because of the following informalities: Claim 16 should be designated as (Withdrawn). Rather than submit a non-responsive mailing the examiner has objected to this claim. This claim is not under examination at this time. Appropriate correction is required.
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.
Claim(s) 1-4 and 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Preston et al (US 2007/0167531)
Preston et al (US 2007/0167531)
Regarding claims 1-4 and 7-9:
Regarding Claim 1: The composition is a moisture curing composition [0001] and moisture curing polymer composition [0006](meeting claim 5)
Regarding Claim 1: The carbonate is in an amount of 20- 75 wt. % [0048] (overlapping the range of claim 6)
Regarding claim 1:
A wide variety of moisture curable polymer compositions are known including silane groups, such as polyurethanes provided with terminal silane groups, polyether polymers with terminal silane groups and polysulfide polymers with terminal silane groups. The natural carbonate may also be used with PVC based polymers.. [0045] A wide variety of moisture curable polymer compositions are known including silane groups, such as polyurethanes provided with terminal silane groups, polyether polymers with terminal silane groups and polysulfide polymers with terminal silane groups. The natural carbonate may also be used with PVC based polymers.. [0045] (meeting the limitation for a one component moisture curing polymer material of claim 1 the prior art teaching a member of the polymer Markush group of the claims)
Regarding Claim 1 d98:
The reference teaching particle size distributions such that d98 will be between 1 and 2 microns (d99 is less than 2 and d95 less than 1 as such the d98 will be between 1 and 2 microns)
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[0057-0059]
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See reference claim 58
Further Regarding Claims 1 and 3:
Preston discloses an alkaline earth metal carbonate having a d50 of 0.5 microns or less and a polymer (Abstract) (meeting and/or overlapping the limitation or less than 0.8 microns of claim 1 and less than 0.6 of claim 3) and a
surface area BET nitrogen method of less than 14 m2/g (overlapping at least 13 m2/g of claims 1 ii and 3 iii)) and
residual moisture below 0.25 wt. % (overlapping less than 0.2 wt. % of claim 1 iii) and less than 0.15 wt.5 of claim 3 iv) ) [0007][0013]
The carbonate is calcium carbonate [0011] (meeting the limitation for ground calcium carbonate of claim 1)
The surface area is BET nitrogen method is ISO 9277 [0020] (meeting the limitations of claim 1 ii) and 3 iii))
The particle size is via the sedimentation method using SEDIGRAPH [0019] (meeting claim 1 i))
Further Regarding Claims 1-4
Example 1 marble (i.e. calcium carbonate) is ground and a surface treatment polymer of 2.75 % stearic acid is coated. The ground calcium carbonate has d50 of .36 microns by Sedigraph and 99% smaller than 2 microns and 95% smaller than 1 micron and a surface area BET nitrogen adsorption of 12.6 m2/g and residual moisture of 0.16 wt.% [0055-0064] (also meeting the moisture content of claims)
Regarding Claim 2: The calcium carbonate is selected from marble, chalk, limestone, and dolomite [0016] (meeting claim 2)
Regarding Claim 4: The carbonate is surface treated with a polymer including aliphatic carboxylic acids having from 10-24 carbon atoms such as stearic acid, palmitic acid etc. [0022] (meeting claim 4 ii) – claim 4 is also written in the alternative I-V) and /OR)
Regarding Claim 7: The polymer composition comprises conventional additives such as plasticizers, UV stabilizers, silanes [0043]
Regarding Claim 8: The amount of surface treatment agent is 2 to 3 % [0041] (within the range of claim 8) but can be adjusted by one of ordinary skill in the art by virtue of the teachings at par. 0037-0040
Regarding Claim 9: The polymer composition may be a sealant [0046] or adhesive [0001] and claim 79 of the reference.
Example 1: marble (i.e. calcium carbonate) is ground (meeting claim 1 natural ground calcium carbonate and claim 2 for marble) and a surface treatment of 2.75 % stearic acid is coated. The ground calcium carbonate has d50 of .36 microns by Sedigraph (meeting claim 1 i) and claim 3 i) ) and 99% smaller than 2 microns and 95% smaller than 1 micron and a surface area BET nitrogen adsorption of 12.6 m2/g and residual moisture of 0.16 wt.% [0055-0064] (meeting claim 1 iii) also meeting the moisture content of the claims)
Example 3 The same marble feed of Example 1 was ground at low solids (less than 20 wt. %) in the absence of dispersant at pilot scale. The grinder product was dewatered, dried and milled at a pilot scale and coated using 3% stearic acid (meeting claim 4 for surface treatment with at least one aliphatic linear or branched carboxylic acid) The d50 was determined to be 0.34 μm and the surface area was 11 m2/g. (meeting claims 1 and 3) Moisture pick up was determined using the same method as Example 1 to be 1000 ppm by weight (that is 0.10 wt. %). [0066](meeting claim 1 and 3) (meeting claim 1 for d50 and claim 3 for d50 claim 2 for marble claim 4 for carboxylic acid surface treatment agent and amount thereof of claim 8 and for moisture less than 0.2 and claim 8 for the amount of surface treatment agent)
Example 6: A SPUR sealant composition: (spur is a silylated polyurethan resin) (See also [0045-0047]) See instant specification at P23 L 3-50 recognizing SPUR as a silyl modified polyurethane)
Example 3 is than added in an amount of 46.28 % (this being the amount of calcium carbonate meeting claim 6) with a plasticizer (meeting claim 7) and a polymer of 36.30 % (meeting the limitations of claim 1 for a polymer )forming a sealant composition (See Example 6 [0069]) (meeting the limitations of claim 1 for a polymer, claim 6 for the amount of calcium carbonate, claim 7 for a plasticizer claim 9 for a sealant composition)
The examples teach the d98 between 1 and 2 microns which falls within and overlaps the claimed range of 0.3 to 3 microns of claim 1 and 0.5 to 1.5 microns of claim 3 respectively rendering same obvious. See MPEP 2144.05(I): "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)"
Response to Arguments
Applicant's arguments filed 12/11/2025 have been fully considered but they are not persuasive.
Applicant argues the prior art does not teach i), ii) iii and iv) in combination, this argument is not persuasive. As above set forth each of these limitations is taught by the cited prior art with examples meeting the claimed ranges and/or overlapping ranges as more fully above set forth.
The claims recite the d50 is les than or equal to 0.8 microns o less than or equal to 0.6 microns as such the range set forth in the prior art of about 0.5 microns or less is within the instantly claimed ranges. The claims recite the BET as least 13 m2/g and BET of 13 m2/g to 25 mg2/g. The prior art teaches BET of at least 10 m2/g (see reference claim 52 overlapping the claimed ranges and also teaches less than14 m2/g [0006] again overlapping the claimed range of BET) See MPEP 2144.05(I): "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)"
The prior art teaches each and every claim limitation as to the compositional components and also teaches the various ranges in amounts falling within or overlapping the instantly claimed ranges thereby establishing a prima facie showing of obviousness by a preponderance of the evidence.
The above rejections are maintained and made final.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892 previously mailed for example:
Buri, et al (CN106488958B) teaches natural ground calcium carbonate and a polymer where the natural calcium carbonate:
weight median particle size d50 value of particulate material containing calcium carbonate less than 0.8mg/g - weight median particle size d50 value of the inorganic particulate material in the measured by the sedimentation method, provided in step a) is preferably 0.1 μm to 5μm, preferably from 0.1 μm to 2.5 μm, more preferably 0.1 μm to 2.0 μm, and most preferably 0.3 μm to 1.8 μm
According to another embodiment of the present invention, as measured by the BET nitrogen specific surface area of the calcium carbonate-containing material is 0.1m2/g to 20.0m2/g, and more preferably 3.0m2/g to 14.0m2/g.
the residual moisture content is 0.09 wt. %
Fornera et al AU 2015266175A1 teaching a composition comprising crumbled natural calcium carbonate, polyurethane, etc. (Abstract) the calcium carbonate d60 0.5 to 2 microns, d 75 0.7 to 3 microns BET 4.0 to 12 m2/g (P4 L15-30)
THIS ACTION IS MADE FINAL. 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 PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/
Primary Patent Examiner, Art Unit 1732
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