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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities: The continuation data should be listed on page 1 of the specification under the heading CROSS-REFERENCE TO RELATED APPLICATIONS. Appropriate correction is required.
Claim Objections
Claim 26 is objected to because of the following informalities: “1 000” should be 1,000 ; “20 000” should be 20,000 ; “2 200” should be 2,200. Appropriate correction is required.
Claim 40 is objected to because of the following informalities: “of any one of” should be of. Appropriate correction is required.
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.
Claim 24, 29 and 34-43 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 24 recites the limitation "the BET method" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 29 recites the limitation "the volumetric ratio" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 29 recites the limitation "the sedimentation method" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claims 34, 36-37 the phrase "as defined in claim 23" renders the claim indefinite because it is unclear which limitation(s) defined in claim 23 correspond to the claimed invention [see MPEP § 2173.05(f)]. Accordingly, dependent claims 38-43 are indefinite.
Claim 35 recites the limitation "the filled polymer mixture of claim 38" in line 1. There is insufficient antecedent basis for this limitation in the claim (claim 38 is a process claim). Claim 35 will be interpreted as depending from claim 34.
Claim 41 recites the limitation "A filled polymer composition obtainable by" in line 1. It is unclear if the filled polymer composition is obtained/produced from the process of claim 36, or if the filled polymer composition is merely obtainable. Accordingly, claim 41 is indefinite. For the purpose of examination, claim 41 will be interpreted as a filled polymer composition obtained by the process according to claim 36.
Claim 43 recites the limitation "An article comprising the filled polymer composition obtainable by" in line 1. It is unclear if the article is obtained/produced from the process of claim 36, or if the article is merely obtainable. Accordingly, claim 43 is indefinite. For the purpose of examination, claim 43 will be interpreted as the article obtained by the process according to claim 36.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 23-25, 27, 29, and 31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tabtiang, A.; Venables, R. Eur. Polym. J. 2000, 36, 137 [IDS 4/12/23], when taken with Calcium Carbonate; Pinpools; 2021.
Regarding claims 23-25, 27 and 31: Tabtiang et al. (Eur. Polym. J. 2000, 36, 137) discloses surface modified calcium carbonate [abstract], wherein calcium carbonate NS2500 having a d50 of 1.5 µm and a d98 (top cut) of 7 µm [§2.1] was coated with 2-dodecenylsuccinic anhydride (DSA) (0.5 phf) [§2.2; Table 1, DSA] and dicumyl peroxide (DCP) (0.11 phf) {corresponding to ~ 0.11 wt% DCP} (corresponding to the instant claimed kit) [§2.2]. The resulting DSA/DCP-coated calcium carbonate (75 phr) was premixed with polypropylene [§2.4] and the premix was compounded in a twin-screw extruder [§2.4; §3.2].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Calcium Carbonate provides evidence for NS-2500 having a d50 of 1.5 µm and a d98 (top cut) of 7 µm [§General Information; NS-2500].
Note DSA:
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[Table 1, DSA].
Regarding claim 29: Tabtiang et al. (Eur. Polym. J. 2000, 36, 137) discloses surface modified calcium carbonate [abstract], wherein calcium carbonate NS2500 having a d50 of 1.5 µm and a d98 (top cut) of 7 µm [§2.1] was coated with 2-dodecenylsuccinic anhydride (DSA) (0.5 phf) [§2.2; Table 1, DSA].
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 inherently 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. 102(a)(1) as being anticipated by Tabtiang, A.; Venables, R. Eur. Polym. J. 2000, 36, 137 [IDS 4/12/23], when taken with Calcium Carbonate; Pinpools; 2021.
Regarding claims 32-33: Tabtiang et al. (Eur. Polym. J. 2000, 36, 137) discloses surface modified calcium carbonate [abstract], wherein calcium carbonate NS2500 having a d50 of 1.5 µm and a d98 (top cut) of 7 µm [§2.1] was coated with 2-dodecenylsuccinic anhydride (DSA) (0.5 phf) [§2.2; Table 1, DSA] and dicumyl peroxide (DCP) (0.11 phf) {corresponding to ~ 0.11 wt% DCP} [§2.2].
Calcium Carbonate provides evidence for NS-2500 having a d50 of 1.5 µm and a d98 (top cut) of 7 µm [§General Information; NS-2500].
Note DSA:
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[Table 1, DSA].
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.
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) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tabtiang, A.; Venables, R. Eur. Polym. J. 2000, 36, 137 [IDS 4/12/23], when taken with Calcium Carbonate; Pinpools; 2021 as applied to claim 23 above.
Regarding claim 30: Tabtiang et al. (Eur. Polym. J. 2000, 36, 137) discloses the basic claimed kit [as set forth above with respect to claim 23]; wherein DSA/DCP-coated calcium carbonate (75 phr; corresponding to ~ 43 wt% filler) was premixed with polypropylene [§2.4] and the premix was compounded in a twin-screw extruder [§2.4; §3.2].
Tabtiang et al. (Eur. Polym. J. 2000, 36, 137) 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].
Allowable Subject Matter
Claims 26 and 28 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.
Claims 34-43 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 and to include 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: 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.
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767