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 § 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.
Claim(s) 23-30, 34-35 and 41-43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rentsch et al. (EP 3 192 837).
Regarding claims 23-24: Rentsch et al. (EP ‘837) discloses surface treated calcium carbonate and a curing agent for the crosslinking of cross-linkable compounds [0001; 0266], wherein the curing agent can be a peroxide [0273-0274]. Rentsch et al. (EP ‘837) discloses polyolefins such as polyethylene and polypropylene [0268], ethylene-propylene rubber (EPR), and ethylene-propylene-diene rubber (EPDM) [0267] as crosslinkable compounds [0266-0268]. Rentsch et al. (EP ‘837) discloses the preferred calcium carbonate has a weight median particle size d50 of 0.7 µm and a top cut d98 of 4 µm [0075]. Rentsch et al. (EP ‘837) discloses the surface treatment agent can be a mono- or di-substituted succinic anhydride compound [0144] containing a crosslinkable double bond [0160-0162].
Rentsch et al. (EP ‘837) does not specifically disclose an embodiment containing a calcium carbonate having a d50 of 0.7 µm and a d98 of 4 µm surface treated with a mono- or di-substituted succinic anhydride compound containing a crosslinkable double bond, a peroxide, a polyethylene, and a polypropylene. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a peroxide with calcium carbonate having a d50 of 0.7 µm and a d98 of 4 µm surface treated with a mono- or di-substituted succinic anhydride compound containing a crosslinkable double bond, polyethylene, and a polypropylene based on the invention of Rentsch et al. (EP ‘837), and would have been motivated to do so since Rentsch et al. (EP ‘837) discloses calcium carbonate having a d50 of 0.7 µm and a d98 of 4 µm [0075] surface treated with a mono- or di-substituted succinic anhydride compound [0144] containing a crosslinkable double bond [0160-0162], and using the surface treated calcium carbonate with a peroxide [0001; 0273-0274] for the crosslinking of cross-linkable compounds [0001; 0266] such as polyethylene and polypropylene [0266-0268]. Additionally, “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) (citations omitted) [see MPEP 2144.06].
Regarding claims 25-26: Rentsch et al. (EP ‘837) discloses maleinized polybutadiene succinic anhydride [0163-0166] having an acid number of 10 to 300 mg KOH per g of maleinized polybutadiene [0165; Table 1].
Regarding claim 27: Rentsch et al. (EP ‘837) discloses mono- or di-substituted succinic anhydride salts [0148], and/or a crosslinkable double bond in a side chain [0160-0161]
Regarding claim 28: Rentsch et al. (EP ‘837) discloses a mixture of surface treatment agents [0144], such as a blend of a phosphoric acid mono-ester and a phosphoric acid-diester [0176].
Regarding claim 29: Rentsch et al. (EP ‘837) discloses calcium carbonate having a d50 of 0.7 µm and a d98 of 4 µm surface treated with a mono- or di-substituted succinic anhydride compound containing a crosslinkable double bond.
The claimed effects and physical properties, i.e. the surface-treated calcium carbonate- containing filler material has i) a hydrophilicity in the range from 0.01 to 4, indicated as the volumetric ratio of water:ethanol, measured at +23 °C (± 2 °C) with the sedimentation method, and/or ii) a moisture pick up susceptibility from 0.01 to 3 mg/g [instant claim 29], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claims 30 and 34-35: Rentsch et al. (EP ‘837) discloses use of the surface treated calcium carbonate in polymer compositions [0001; 0260-0265].
Rentsch et al. (EP ‘837) does not disclose 50 wt% filler. However, differences in concentration will not support the patentability of subject mat-ter encompassed by the prior art unless there is evidence indicating such concentration is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Regarding claims 41-43: Rentsch et al. (EP ‘837) discloses use of the surface treated calcium carbonate in polymer compositions [0001; 0260-0265].
Rentsch et al. (EP ‘837) does not disclose 50 wt% filler. However, differences in concentration will not support the patentability of subject mat-ter encompassed by the prior art unless there is evidence indicating such concentration is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
“[E]ven 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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
The claimed effects and physical properties, i.e. the impact strength of the polymer composition is increased, compared to the same polymer composition not comprising the peroxide agent or compared to the same polymer composition comprising the same calcium carbonate-containing filler material lacking a surface-treatment layer or compared to the same polymer composition not comprising the surface-treated calcium carbonate-containing filler material. [instant claim 42], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Claim(s) 32-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rentsch et al. (EP 3 192 837).
Regarding claim 32: Rentsch et al. (EP ‘837) discloses surface treated calcium carbonate [abstract], wherein the preferred calcium carbonate has a weight median particle size d50 of 0.7 µm and a top cut d98 of 4 µm [0075]. Rentsch et al. (EP ‘837) discloses the surface treatment agent can be a mono- or di-substituted succinic anhydride compound [0144] containing a crosslinkable double bond [0160-0162]. Rentsch et al. (EP ‘837) discloses using the surface treated calcium carbonate and a curing agent for the crosslinking of cross-linkable compounds [0001], wherein the curing agent can be a peroxide [0273-0274].
Rentsch et al. (EP ‘837) does not specifically disclose an embodiment containing a calcium carbonate having a d50 of 0.7 µm and a d98 of 4 µm surface treated with a mono- or di-substituted succinic anhydride compound containing a crosslinkable double bond, and a peroxide. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a peroxide with calcium carbonate having a d50 of 0.7 µm and a d98 of 4 µm surface treated with a mono- or di-substituted succinic anhydride compound containing a crosslinkable double bond based on the invention of Rentsch et al. (EP ‘837), and would have been motivated to do so since Rentsch et al. (EP ‘837) discloses calcium carbonate having a d50 of 0.7 µm and a d98 of 4 µm [0075] surface treated with a mono- or di-substituted succinic anhydride compound [0144] containing a crosslinkable double bond [0160-0162], and using the surface treated calcium carbonate with a peroxide [0001; 0273-0274]. Additionally, “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) (citations omitted) [see MPEP 2144.06].
Regarding claim 33: Rentsch et al. (EP ‘837) discloses peroxides [0273] such as dibenzoyl peroxide [0274]
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rentsch et al. (EP 3 192 837) as applied to claim 23 above, and further in view of Tabtiang, A.; Venables, R. Eur. Polym. J. 2000, 36, 137.
Regarding claim 31: Rentsch et al. (EP ‘837) discloses the basic claimed kit [as set forth above with respect to claim 23]; wherein Rentsch et al. (EP ‘837) discloses peroxide is on the surface of the surface treated calcium carbonate [0262; 0266; 0276].
Rentsch et al. (EP ‘837) does not specifically disclose 0.01 to 0.5 wt% peroxide. However, Tabtiang et al. (Eur. Polym. J. 2000, 36, 137) discloses surface modified calcium carbonate [abstract], wherein calcium carbonate was coated dicumyl peroxide (DCP) (0.11 phf) {corresponding to ~ 0.11 wt% DCP} [§2.2]. Rentsch et al. (EP ‘837) and Tabtiang et al. (Eur. Polym. J. 2000, 36, 137) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of discloses surface modified calcium carbonate. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined 0.11 wt% peroxide, as taught by Tabtiang et al. (Eur. Polym. J. 2000, 36, 137) in the invention of Rentsch et al. (EP ‘837), and would have been motivated to do so since Tabtiang et al. (Eur. Polym. J. 2000, 36, 137) discloses coating calcium carbonate with 0.11 wt% peroxide [§2.2].
Allowable Subject Matter
Claims 36-40 are 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.
The following is a statement of reasons for the indication of allowable subject matter: Rentsch et al. (EP 3 192 837) does not disclose the claimed process.
Tabtiang, A.; Venables, R. Eur. Polym. J. 2000, 36, 137 discloses calcium carbonated treated with 2-dodecenylsuccinic anhydride (DSA) and dicumyl peroxide (DCP) [§2.2; §2.4; Table 1, DSA] shows no evidence of coupling and caused matrix degradation leading to deteriorated ductility [§3.4; §4; Table 2, DSA; Fig. 6]. There would be no motivation to modify the mixture of polypropylene and DSA/TCP treated calcium carbonate to include polyethylene; graft the calcium carbonate with a homopolymer containing butadiene units; further surface treat with a saturated surface-treatment agent, as DSA/TCP treated calcium carbonate led to a reduction in toughness and ductility [abstract; §4].
While Brunner et al. (US 2017/0218148) discloses CC3 (calcium carbonate {d50 of 1.7 µm and a d98 (top cut) of 6 µm} first surface treated with 0.7 wt% alkenyl succinic anhydride and then 0.05 wt% polydimethylsiloxane) [0280] for use in polyolefin (ex. polypropylene, polyethylene, etc. [0060]) breathable films [abstract], Brunner et al. (US 2017/0218148) does not disclose a peroxide.
Response to Arguments
Applicant’s arguments, see pg. 16, ln. 21 – pg. 18, ln. 24, filed 4/16/26, with respect to the rejection(s) of claim(s) 23-25, 27, 29, and 31-33 under 35 U.S.C. 102(a)(1) over Tabtiang, A.; Venables, R. Eur. Polym. J. 2000, 36, 137 [IDS 4/12/23], when taken with Calcium Carbonate; Pinpools; 2021 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 Rentsch et al. (EP 3 192 837) {see above}.
See attached form PTO-892.
Correspondence
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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