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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 17, along with claims 20-25, dependent therefrom, is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Independent claim 17 has been amended to require “wherein the clay mineral is a low-temperature calcined clay with a ratio of Fe2O3 relative to the sum of SiO2 + Al2O3 of 4 wt% or lower.” Applicant states this amendment is supported by the specification examples from table 1 wherein the weight ratio of Fe2O3 relative to the sum of SiO2 + Al2O3 can be calculated. Although such calculation can be made, the Examiner notes, instant independent claim 17 requires the ratio be 4 wt% or lower. Based on Applicant’s calculations, such is only obtained by clay type 3 and clay type 5; clay type 3 is indicated in Table 1 as low-temperature calcined clay while clay type 5 is indicated as calcined clay. Clay types 2-4 are also listed in Table 1 as “low-temperature calcined clay.” As such, the recitation of “wherein the clay mineral is a low-temperature calcined clay with a ratio of Fe2O3 relative to the sum of SiO2 + Al2O3 of 4 wt% or lower” is not explicitly supported by the specification. Only 1 of the 4 “low” temperature samples has a ratio of 4 wt% and none of the “low” temperature samples have a ratio that is lower than such, and thus, the provision for “or lower” in independent claim 17 is not supported with respect to a “low temperature calcined clay,” as is required by the claim. The singular example that is lower than 4% is not defined by the table and/or specification as a “low” temperature sample, but rather, calcined clay. As such, it is the position of the Office that Applicant’s amendments are not supported by the specification.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 17 and 19-25 are rejected under 35 U.S.C. 103 as being unpatentable over Guillot et al. (US 2011/0133006 – cited previously) in view of Martirena et al. (Color control in industrial clay calcination).
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]).
Guillot et al. discloses 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, for example, kaolin, is a low-temperature calcined clay having a ratio as claimed.
Martirena et al. teaches low grade clays often have iron in their composition (abstract), and, further, wherein a clay thermal treatment is necessary to obtain a calcined material for the cement industry, wherein the reactivity of the clay depends on the kaolinite content and the firing temperature (Introduction, right column). A raw clay sample on page 4 is identified wherein Fe2O3 is present in an amount of 3.76 while SiO2 and Al2O3 are present in respective amounts of 54.52 and 28.88. Such a sample has an approximate ratio of Fe2O3 relative to the sum of SiO2 + Al2O3 of approximately 4.5%. It is further suggested wherein one of the limiting factors for the use of clay is the fact that most low grade kaolinitic clays have Fe2O3 content around 2-9% or higher and this has an impact on color of the material when calcined; remedies to avoid the formation of a reddish calcined clay due to higher iron contents are suggested (Introduction, last 2 paragraphs).
It would have been obvious to one having ordinary skill in the art to try a calcined clay mineral of kaolin in the method of Guillot et al. having a ratio as claimed in order to provide a clay product that is useful in further applications and that further avoids the formation of a dark reddish hue associated with clays having higher iron contents.
Martirena et al. suggests iron weight percents as low as 2%, and, further, the example composition set forth therein provides for a ratio of 4.5%; one having ordinary skill in the art would recognize the optimal ratio of Fe2O3 relative to the sum of SiO2 + Al2O3 of the clay to provide for in the method of grinding of Guillot et al. in order to avoid the provision of a product with hues desired to be avoided in the industry 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%.). Additionally, 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). (“A simple case in the predictable arts that does not require expertise to find that the claimed range of “less than 6 lbs/ft3” and the prior art range of “between 6lbs/ft3 and 25 lbs/ft3” are so mathematically close that the examiner properly rejected the claims as prima facie obvious.”). The instant specification fails to explicitly establish the instantly claimed ratio of 4% or lower as critical, as exemplified by the explicit lack of disclosure thereof, as well as presence of multiple examples exceeding such a ratio. Furthermore, it is unclear if any unexpected results are achieved by providing for a clay mineral with such a ratio. Since the desire to avoid higher iron concentrations in calcined clays is known to prevent darker hued clays, it does not appear that such would be considered an unexpected result of providing for a ratio as claimed, and, as such, the determination of optimal ratio would be achievable through routine experimentation in the art.
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 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 22, Guillot et al. discloses wherein the additive is a mixture of DEIPA or TIPA with citric acid ([0046]).
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.
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).
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 17 and 19-25 are rejected under 35 U.S.C. 103 as being unpatentable over Pellerin et al. (US 2021/0387909).
With respect to independent claim 17, Pellerin et al. discloses a method to increase the efficiency of dry grinding of clay mineral ([0035]-[0036]; [0041]), the method comprising dry grinding the clay mineral ([0035]-[0036]; [0041], wherein at least metakaolin is disclosed) with an additive selected from the group as claimed ([0031]; [0081]), wherein the clay mineral is a low temperature calcined clay ([0041], wherein metakaolin, a calcined form of kaolinite, is disclosed).
Pellerin et al. discloses wherein the mineral additives that are ground in the grinder include metakaolins, such as type A in accordance with the French standard NF P 18-513 (August 2012) ([0041]). Such metakaolins have a SiO2 + Al2O3 a of at least 90%, along with greater than or equal to 700 mg Ca(OH)2/g. Although silent to explicitly providing a ratio of Fe2O3 relative to the sum of SiO2 + Al2O3 thereof, one having ordinary skill in the art would recognize the optimal ratio thereof to provide for when employing metakaolin A in the method of grinding of Pellerin et al. 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%.). Additionally, 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). (“A simple case in the predictable arts that does not require expertise to find that the claimed range of “less than 6 lbs/ft3” and the prior art range of “between 6lbs/ft3 and 25 lbs/ft3” are so mathematically close that the examiner properly rejected the claims as prima facie obvious.”). The instant specification fails to explicitly establish the instantly claimed ratio of 4% or lower as critical, as exemplified by the explicit lack of disclosure thereof, as well as presence of multiple examples exceeding such a ratio. Furthermore, it is unclear if any unexpected results are achieved by providing for a clay mineral with such a ratio as exemplified by the instant disclosure’s teachings of achieving similar results with a ratio exceeding such. As such, the determination of optimal ratio would be achievable through routine experimentation in the art in order to provide for an increased efficiency in grinding of such a clay by addition of an additive as claimed.
With respect to dependent claims 19 and 20, Pellerin et al. discloses wherein the additive is selected from the group as claimed ([0031]).
With respect to dependent claim 21, Pellerin et al. discloses wherein the additive is DEIPA or TIPA with a sugar ([0046]-[0047]). Although silent to the amount thereof included,
when a retarder is used, it is the position of the Office that one having ordinary skill in the art would recognize the optimal ratio thereof to employ in order to obtain the desired set retarding effects 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 Pellerin et al. is indeed suggested to include one or more of DEIPA or TIPA and a sugar while being suitable for use in increasing griding capacity, 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 22, Pellerin et al. discloses wherein the additive is a mixture with citric acid as claimed ([0045]).
With respect to dependent claim 23, Pellerin et al. discloses wherein the alkanolamine is added for dry grinding with the mineral additives and further, wherein additional additives may be present therewith ([0041]-[0057]). The reference, however, fails to disclose a presence of water therewith during griding. 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. Since Pellerin 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 Pellerin et al. is indeed suggested to include 0 wt% water in an embodiment, 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, Pellerin et al. discloses wherein the additive is added in an amount as claimed ([0044]).
With respect to dependent claim 25, Pellerin et al. discloses wherein the grinding is done in one as claimed ([0034]),
Response to Arguments
Applicant’s arguments with respect to the rejection of claim 18 under 25 USC 112(b) have been fully considered and are persuasive. The 35 USC 112 rejection with respect to the term “low” has been withdrawn and thus not applied to claim 17, wherein such is now incorporated.
Applicant’s arguments with respect to the anticipation rejection of claims by Guillot et al. have been fully considered and are persuasive in view of Applicant’s amendments to claim 17. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of further consideration of the now required limitations pertaining to the ratio of components in the clay.
The Office acknowledges Applicant’s comments pertaining to unexpected results as achieved for Clay types 3 and 5, with clay type 6 shows a similar percent increase as clay type 3. Applicant asserts clay types 3 and 5 show the best efficiency increase during grinding achieved. Since clay type 6 shows similar results to clay 3 and 5, it is unclear if the unexpected results Applicant notes are indeed unexpected and directly related to a percent of less than 4% as clay type 6 has a ratio of 7%, almost double that which Applicant instantly claimed and yet achieves results similar to those for clay 3.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Should a particular percent increase in Blaine fineness that is unexpected be obtained and/or associated with the instant method, Applicant may consider identifying such within the claims as an active step of the method. Alternatively, should a lesser amount of time be used for the grinding process, and, thus, increased efficiency is achieved thereby, Applicant may consider a method step associated with a time element for the grinding process.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
07/31/26
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