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 with traverse of Group I, claims 17-25, in the reply filed on 11/19/25 is acknowledged. The traversal is on the grounds that the finding of lack of unity is premature as a full search of the prior art has yet to be conducted.
This is not found persuasive because Guillot demonstrates that the shared technical feature is not a special technical feature a posteriori. Applicant’s arguments fail to address the a posteriori analysis, and, accordingly, the original determination remains unchallenged.
The requirement is still deemed proper and is therefore made FINAL.
Claims 26-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/19/25.
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 18 is 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. The term “low” in claim 18 is a relative term which renders the claim indefinite. The term “low” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “low” renders the scope of the claims indefinite as it is unclear as to how “low” the temperature must be during calcining for the clay to be considered a “low” temperature calcined clay. Or is the clay intended to be usable at certain “low” temperatures? Clarification is required.
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.
Claims 17, 19, 20, 22 and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guillot et al. (US 2011/0133006).
With respect to independent claim 17, Guillot et al. discloses a method to increase the efficiency of dry grinding of clay mineral ([0025], wherein kaolin is disclosed), the method comprising dry grinding the clay mineral together with an additive selected from the group as claimed ([0046]-[0048]).
With respect to dependent claims 19 and 20, Guillot et al. discloses wherein the additive is selected from the group as claimed ([0046]-[0048]).
With respect to dependent claim 22, Guillot et al. discloses wherein the additive is a mixture of DEIPA or TIPA with citric acid ([0046]).
With respect to dependent claim 25, Guillot et al. discloses wherein the griding is done in an attrition mill or a compressive grinder ([0062] and [0070], wherein a ball-mill grinder, i.e., a compressive grinder, is disclosed).
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.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Guillot et al. as applied to claim 17 above, and further in view of Pope et al. (US 5,856,397).
Guillot et al. discloses the method as set forth above with respect to claim 17, wherein the mineral matter is chosen from dolomites, talc, kaolin and calcium carbonate ([0025]). The reference, however, fails to explicitly disclose wherein the clay mineral, i.e., kaolin, is a low-temperature calcined clay as claimed. Pope et al. teaches methods of dry milling minerals, including kaolin clay, wherein an aid for the dry grinding thereof is added for the purpose of increasing the production rate in the mill (col. 1, l. 6-15); the reference further suggests wherein the kaolin may be anhydrous, i.e., subjected to calcination by heating to 450oC or higher or fully calcined, i.e., heated above 980oC, and wherein calcined kaolin is generally anhydrous kaolin clay (col. 1, l. 35-60). Pope et al. teaches such calcined clay as that which is subjected to dry milling (col. 1, l. 6-15). It would have been obvious to one having ordinary skill in the art to try calcined clay, i.e., a “low” temperature calcined clay in that it is subjected to a lower temperature than fully calcined clay, as the kaolin clay in the method of Guillot et al. in order to yield the predictable result of enhancing the grinding efficiency thereof as such a clay is a known form of kaolin clay chosen from a finite list of possibilities thereof that is treated by a dry grinding process.
Claims 21, 24 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Guillot et al..
With respect to dependent claim 21, Guillot et al. discloses wherein the additive includes one or more of an alkanolamine and a carbohydrate ([0027]), wherein an exemplary alkanolamine is TIPA ([0046]) and exemplary carbohydrates include sugars such as glucose, fructose and sucrose ([0048]). Although silent to a ratio of TIPA:sugar when one or more of the above agents is used, given Guillot et al.’s suggestion for inclusion of each in the grinding efficiency enhancing additive, it is the position of the Office that one having ordinary skill in the art would recognize the optimal ratio thereof to employ when such are used together in order to effectively enhance the grinding efficiency of the clay mineral therewith since it has been held wherein 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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. 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); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed ratio as critical, nor has any experimental data been presented to show such a ratio is associated with unexpected results. Since the grinding efficiency additive of Guillot et al. is indeed suggested to include one or more of TIPA and a sugar while being suitable for use in increasing griding capacity and reducing specific consumption of grinding energy, it does not appear that such would be considered an unexpected result of using the presently ratio thereof, and, as such, the determination of optimal ratio of such components would be achievable through routine experimentation in the art.
With respect to dependent claim 23, Guillot et al. discloses the range of percents of components for the dry grinding aid, wherein 0-65wt% of water is disclosed ([0050]). The reference additionally discloses wherein the polyglycerol component may be in pure form ([0027]; [0038]; [0051]), i.e., not as an aqueous solution thereof/0 wt% of water. As such, it would have been obvious to one having ordinary skill in the art to try a method wherein the amount of water present during grinding is not higher than 1 wt% relative to a total dry weight of the clay mineral in order to yield the predictable result of reducing the specific grinding energy and increasing grinding capacity of the clay mineral matter in order to obtain a given granulometry thereof. Since Guillot et al. clearly suggests the method as including the use of an additive without water, one of ordinary skill would recognize the provision of “not higher than 1 wt% relative to a total dry weight of the clay mineral” as instantly claimed as an option to try and thus obvious since it has been held wherein 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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. 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); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed weight percent of water as critical and it is unclear if any unexpected results are achieved by providing for such. Since the grinding efficiency additive of Guillot et al. is indeed suggested to include 0 wt% water in an embodiment, as well as be suitable for increasing griding capacity and reducing specific consumption of grinding energy, it does not appear that such would be considered an unexpected result of using the presently claimed weight percent of water, and, as such, the determination of optimal weight percent thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 24, Guillot et al. discloses wherein the additive/agent ([0027]) can be added in an amount of 1-50 wt% of the formulation ([0041]-[0050]), and, further, wherein 0.1 to 1 mg, total dry equivalent, is added for each square meter of mineral/clay matter ([0057]) before and/or during grinding ([0063]). Although silent to the weight percent of the additive relative to a total dry weight of the clay mineral, based on the suggested amounts set forth above, it is the position of the Office that one having ordinary skill in the art would recognize an optimal weight percent of the additive/agent to employ since it has been held wherein 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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. 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); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed weight percent of additive as critical and it is unclear if any unexpected results are achieved by providing for such. Since the grinding efficiency additive of Guillot et al. is added in an amount so as to increase griding capacity and reduce the specific consumption of grinding energy, it does not appear that such would be considered an unexpected result of using the presently claimed weight percent of additive in the composition, and, as such, the determination of optimal weight percent thereof would be achievable through routine experimentation in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2020/0047188 discloses a method for grinding a clay mineral using a vertical roller mill wherein a grinding stabilizing additive of an alkanol amine is used.
EP 2660217 discloses a grinding aid comprising an alkanolamine.
US 2013/0112113 discloses a method of grinding a hydraulic compound in the presence of an alkanolamine.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 5712724137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
02/09/26