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 in the reply filed on 05/19/2026 is acknowledged.
Applicants argue the use of renewable carbon black in a production process leads to measurable distinctive properties of the carbon black product, specifically, an increased percentage of modern carbon (see Applicant’s Remarks at pg. 3). The Examiner finds this argument persuasive, and is no longer relying on Nilsson as teaching the technical feature. While Nilsson is no longer relied upon, Groups I-VI still lack unity of invention in view of Stanyschöfsky (US-20110236816-A1), ASTM D2414-00a, and ASTM D2414-19, for the same reasons as discussed in the rejection of claim 1 below (i.e., the prior art teaches the technical feature, as shown in the claim 1 rejection below). Therefore, the requirement is still deemed proper and is therefore made FINAL.
To the extent that Applicant’s remaining arguments apply, they are addressed below:
First, Applicants argue the International Searching Authority found unity of invention in the PCT application (see Applicant’s Remarks at pg. 2). Further, Applicants argue claims directed to a product, a process specially adapted for the manufacture of said product, and a use of the said product are considered to have unity of invention (see Applicant’s Remarks at pg. 2).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
An “examiner may make a lack of unity requirement in a national stage application even if no such requirement was made by the ISA or IPEA”. See MPEP § 1893.03(d). Consequently, whether the ISA previously noted lack of unity or not has no bearing on the national stage’s determination regarding lack of unity. Further, even if the claims fell within the category of inventions specified, this does not preclude an a posteriori unity of invention analysis. 37 CFR § 1.475(b) explicitly indicates “where a group of inventions is claimed in an application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features.” In this case, there is no special technical feature between the claims, as demonstrated by Stanyschöfsky (US-20110236816-A1), ASTM D2414-00a, and ASTM D2414-19, see the claim 1 rejection below. Consequently, a proper lack of unity of invention analysis is provided.
Claims 5-15 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. Claims 5-15 are directed to a non-elected invention. Applicant timely traversed the restriction requirement in the reply filed on 05/19/2026.
Response to Amendment
The most recent claim set dated 10/12/2023 does not comply with the requirements of 37 CFR 1.121(c) because claims 5-15 contain the “Currently Amended” status indicator, despite being directed to a non-elected invention(s). To correct, the Examiner suggests updating the status of these claims to reflect their withdrawn status.
Amendments to the claims filed on or after July 30, 2003 must comply with 37 CFR 1.121(c) which states:
(c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).
(1) Claim listing. All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of “canceled” or “not entered” may be aggregated into one statement (e.g., Claims 1–5 (canceled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment.
(2) When claim text with markings is required. All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of “currently amended,” or “withdrawn” if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn—currently amended.”
(3) When claim text in clean version is required. The text of all pending claims not being currently amended shall be presented in the claim listing in clean version, i.e., without any markings in the presentation of text. The presentation of a clean version of any claim having the status of “original,” “withdrawn” or “previously presented” will constitute an assertion that it has not been changed relative to the immediate prior version, except to omit markings that may have been present in the immediate prior version of the claims of the status of “withdrawn” or “previously presented.” Any claim added by amendment must be indicated with the status of “new” and presented in clean version, i.e., without any underlining.
(4) When claim text shall not be presented; canceling a claim.
(i) No claim text shall be presented for any claim in the claim listing with the status of “canceled” or “not entered.”
(ii) Cancellation of a claim shall be effected by an instruction to cancel a particular claim number. Identifying the status of a claim in the claim listing as “canceled” will constitute an instruction to cancel the claim.
(5) Reinstatement of previously canceled claim. A claim which was previously canceled may be reinstated only by adding the claim as a “new” claim with a new claim number.
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 4 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.
In claim 4, the term “(22 FDA PAH)” is unclear. It is unclear whether the method is limiting the measured polycyclic aromatic hydrocarbons to be 22 specific polycyclic aromatic hydrocarbons or not. In other words, the parentheses make it unclear whether the limitation is optional or not. Further, the term “PAH” is not immediately defined, and is presumably “polycyclic aromatic hydrocarbons.” To correct, the Examiner suggests deleting the term “(22 FDA PAH)” from the claims. For the purposes of examination, the Examiner is interpreting the claim as if the term in the parentheses is optional.
In claim 4, the content amounts for section (e) and (f) do not contain units. Are the claimed percentages in terms of wt%, mol%, vol%, or some other concentration metric? For the purposes of examination, the Examiner is interpreting the percentages to be in terms of wt%.
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Stanyschöfsky et al. (US-20110236816-A1) (hereinafter referred to as “Stanyschöfsky”), in view of ASTM D2414-00a (“D2414-00a: Standard Test Method for Carbon Black - Oil Absorption Number (OAN).” ASTM, Jan. 2001) (hereinafter referred to as “ASTM D2414-00a”) and ASTM D2414-19 (“D2414-19: Standard Test Method for Carbon Black - Oil Absorption Number (OAN).” ASTM, Aug. 2019) (hereinafter referred to as “ASTM D2414-19”).
Regarding claims 1 and 4, Stanyschöfsky teaches a carbon black having an oil absorption number (OAN) measured according to ASTM D2414-19 of equal to or less than 80 mL/100 g (equal to or less than 70 mL/100 g, regarding claim 4), wherein the carbon black is obtained from a carbon black feedstock comprising a renewable carbon black feedstock (see Stanyschöfsky at para. 0004, teaching a carbon black obtained from a renewable feedstock; also see Stanyschöfsky at para. 0041, teaching the oil absorption number of the carbon black may range from 20 to 200 mL/100 g when measured using the ASTM D2414-00 standard; the ASTM D2414-00 standard is the standard from 2000, whereas the claimed ASTM D2414-19 standard is the standard from 2019 (the standard is updated annually); when comparing the 2000 versus the 2019 standard, the procedures are very similar; for instance, both utilize the same reagents of n-dibutyl phthalate or paraffin oil, see sections 6.1-6.4 for ASTM D2414-00a at pg. 2 as well as sections 6.1-6.5 for ASTM D2414-19 at pg. 2; both utilize the same absorptometers, see sections 8.1-8.3 for ASTM D2414-00a at pg. 2-3 as well as sections 8.1-8.3 for ASTM D2414-19 at pg. 2-3; and both utilize a similar procedure for measuring and calculating the oil absorption number, see sections 9.1-9.11 for ASTM D2414-00a at pg. 3 and sections 10.1-10.9 for ASTM D2414-19 at pg. 3-4; consequently, an oil absorption number measured using the ASTM D2414-00a standard (the 2000 standard) would be substantially equivalent if not identical to an oil absorption number measured using the claimed ASTM D2414-19 standard (the 2019 standard); accordingly, it necessarily follows that Stanyschöfsky range of 20 to 200 mL/100 g overlaps the claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05; products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II); the burden of proof then shifts to Applicants to provide objective evidence to the contrary, see In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01)).
Regarding claims 2-3, see Stanyschöfsky at para. 0057, teaching the renewable carbon black feedstock may be sunflower oil; sunflower oil is a liquid cooking oil, see Applicant’s specification at pg. 3, lines 14-16.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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