DETAILED ACTION
An amendment, amending claims 1, 14-15 and 19, was entered on 2/25/26.
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 .
Response to Arguments
Applicant argues that the combination of Parker and Garska does not teach the inclusion of both a dispersant and a lignosulfonic acid binder. Applicant further argues that a dispersant and a binder are distinct, where a dispersant aids in dispersing while a binder promotes agglomeration. This is not persuasive. First, claim 1 is directed to a product which is defined by the product itself and not its intended uses. In this case, Garska teaches the inclusion of lignosulfonic acid salt. Whether that lignosulfonic acid serves as a binder or a dispersant is not relevant to a product claim. Second, one of ordinary skill in the art would have understood that dispersants can also serve as binders (see, e.g., US 6,010,639 at 5:13-18). Finally, as to whether Parker and Garska teaches both a dispersant and a binder, Parker and Garska both teach that more than one dispersant can be included (Parker at ¶ 0122, e.g.; Garska at ¶¶ 0055-0056) and that one of those dispersants is polyacrylate (Parker at ¶ 0055, Garska at ¶ 0056). Garska further teaches that the second dispersant can be a lignosulfonic acid salt.
Applicant also argues that the double patenting rejection is deficient because Garska fails to teach both a polyacrylate dispersant and a lignosulfonic acid binder. This is not persuasive. Garska teaches that multiple dispersants can be included and that suitable dispersants include polyacrylate and lignosulfonic acid.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Parker et al. (US 2021/0032164) in light of Garska et al. (US 2006/0131243).
Claims 1, 2 and 6: Parker teaches a composition comprising: at least one form of attapulgite present in a solid weight fraction (SWF) of 0.5-4% (¶¶ 0025, 0039); kaolin present in a solid in a SWF of 35-40% (¶¶ 0025, 0047); and Ball Clay present in a SWF of 0-25% (¶ 0025).
Parker further teaches that the composition includes multiple dispersants, such as sodium silicate and polyacrylate (¶¶ 0055, 0057, 0122), but fails to teach the inclusion of a lignosulfonic acid. Garska teaches a composition of kaolin (Abst.) and explains that suitable dispersants include sodium silicate or sodium lignosulfonate (i.e. claimed lignosulfonic acid salt) (¶ 0056). The simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected sodium lignosulfonate in place of sodium silicate in Parker with the predictable expectation of success.
Claims 3-5: Parker teaches that the attapulgite is either impoverished in smectite (¶ 0028), dry processed (¶ 0028) or a slurry (¶ 0034).
Claims 7, 10 and 12: Parker teaches that the composition is a pug, paste or cake with a total percentage of solids by weight of 70-90% (¶ 0085).
Claims 8 and 9: Parker teaches the inclusion of a second form of attapulgite present in a SWF of 0.25-4%, where the first form is purified (¶ 0036) and the second form is dry processed (¶ 0038).
Claim 11: Parker teaches that the composition is an aqueous suspension with a total percent solids by weight of 60-74% (¶ 0083).
Claim 13: Parker teaches that the amount of dispersant is adjusted to maintain a desired viscosity (¶ 0057). Where 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. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a percent solids by weight amount of sodium lignosulfonate of 0.1-0.4% depending on the desired viscosity.
Claims 14-18: Parker, as modified by Garska, teaches a method of forming the composition of claim 1 by mixing and agitating each of the attapulgite, kaolin, dispersant and Ball Clay with water to form a slurry (¶¶ 0092-0094).
Claims 19-20: Parker, as modified by Garska, further teaches forming the composite into wet ceramic pieces (¶ 0106); drying the wet ceramic piece having a defined shape (¶ 0107); sintering the dried piece (¶ 0108) and finishing the sintered piece (¶ 0109).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Parker and Garska in light of Blackburn et al. (US 2008/0000392).
Claim 21: Parker and Garska are silent regarding the SWF of dispersant. Blackburn, however, explains that the amount of dispersant included in a mixture is based on the desired fluidity (¶ 0037). Where 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. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a SWF of dispersant of 0.2-0.35% depending on the desired fluidity.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,708,307 in view of Garska. The ‘307 Patent claims identical subject matter to claims 1-18 of the instant application except that it does not claim a polyacrylate or lignosulfonic acid. Garska, as discussed above, teaches that sodium lignosulfonate and polyacrylate are suitable dispersants for kaolin compositions (¶ 0056). Combining prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have included polyacrylate and sodium lignosulfonate in the composition of the ‘307 Patent with the predictable expectation of success.
Claims 14-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10 and 21 of U.S. Patent No. 11,198,646 in view of Garska. The ‘646 Patent claims identical subject matter to claims 14-20 of the instant application except that it does not claim a polyacrylate or lignosulfonic acid. Garska, as discussed above, teaches that polyacrylate and sodium lignosulfonate are suitable dispersant for kaolin compositions (¶ 0056). Combining prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have included sodium lignosulfonate in the composition of the ‘646 Patent with the predictable expectation of success.
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,708,307 in view of Garska and Blackburn. The ‘307 Patent claims identical subject matter to claims 1-18 of the instant application except that it does not claim a polyacrylate or lignosulfonic acid or a SWF of dispersant. Garska, as discussed above, teaches that sodium lignosulfonate and polyacrylate are suitable dispersants for kaolin compositions (¶ 0056). Combining prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have included polyacrylate and sodium lignosulfonate in the composition of the ‘307 Patent with the predictable expectation of success.
Blackburn explains that the amount of dispersant included in a mixture is based on the desired fluidity (¶ 0037). Where 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. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a SWF of dispersant of 0.2-0.35% depending on the desired fluidity.
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 Robert A Vetere whose telephone number is (571)270-1864. The examiner can normally be reached M-F 7:30-4:00 EST.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712
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