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 .
Response to Amendment
Applicant’s amendment to the claims filed June 25, 2026 has been entered. Claims 1-9 and 16-19 are currently amended. Claims 14 and 15 have been canceled. Claims 20 and 21 are new. Claim 1-13 and 16-21 are pending and under examination.
Claim Rejections - 35 USC § 102
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 10-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Korenaga et al. (EP 1785452, IDS document).
Regarding claim 10, Korenaga et al. teach the method as claimed to produce the treated composition (paragraphs [0005]-[0015], [0024]-[0028], [0049] and [0050] for the first layer; paragraphs [0034]-[0038] and [0051] for the second layer).
As to claim 11, Korenaga et al. teach a BET as claimed (paragraphs [0029] and [0030]).
As to claim 12, Korenaga et al. teach a precursor as claimed (paragraphs [0006], [0013], [0024]-[0028]; e.g. sodium silicate).
As to claim 13, Korenaga et al. further teach an aliphatic carboxylic acid layer as claimed (paragraphs [0017] and [0018]).
Claims 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Williams (US 4,167,423).
Regarding claim 10, Williams teaches the method as claimed to produce the treated composition (Examples 13 and 19).
As to claim 11, Williams teaches the claimed and disclosed composition. It follows that the same materials have the same properties.
As to claim 12, Williams teaches a precursor as claimed (col. 3, line 14-col. 8, line 42).
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 13 is rejected under 35 U.S.C. 103 as being unpatentable over Williams (US 4,167,423), as applied to claims 1-6, 10-12, 14 and 16-19 above, and further in view of Moseley et al. (US 2014/0287185).
As to claim 13, Williams teaches the method of claim 10 as claimed. Williams does not teach coating with aliphatic carboxylic acid/stearic acid as claimed. However, Moseley et al. (paragraphs [0014]-[0017]) teach an analogous composition and method wherein the filler/calcium carbonate is coated with aliphatic carboxylic acid/stearic acid as claimed.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Williams and Moseley et al. and to have coated the calcium carbonate of Williams with an aliphatic carboxylic acid/stearic acid as claimed, as suggested by Moseley et al., for the purpose, as suggested by Moseley et al. of hydrophobizing the surface of the calcium carbonate particles and facilitating further treatment/usage of the calcium carbonate particles.
Allowable Subject Matter
Claims 1-9 and 16-21 are allowed.
Response to Arguments
Applicant’s arguments filed June 25, 2026 have been fully considered. Regarding the rejection of claim 10 over Korenaga et al., applicant generally argues that none of the cited paragraphs teach a method comprising providing a calcium carbonate core, applying a first layer as claimed to produce a first treated core, and contacting the first treated with a second material as claimed. This argument is not persuasive.
The Korenaga et al. reference is understood to teach each of the argued and claimed limitations in the previously cited paragraphs and is understood to remain applicable absent persuasive arguments to the contrary. At this point, it is not clear to the examiner why applicant is of the view that the teaching of Korenaga et al. is not applicable as the previously cited paragraphs appear to clearly teach the claimed limitations absent further clarity to demonstrate why the examiner is not correct.
Korenaga et al. teach providing a calcium carbonate core (e.g. paragraphs [0005]-[0015]), applying a first layer as claimed to produce a first treated core (e.g. paragraphs [0013], [0025], [0027], [0049]) and contacting the first treated with a second material as claimed (e.g. paragraph [0051] and [0034]-[0038]). To further clarify the previous citations, which seem to be sufficiently clear, the silicic acid contacts the calcium carbonate with a first material comprising an aqueous silicate as claimed (paragraphs [0013], [0025], [0027] and [0049]). After this has been performed, a vulcanization promoter is “sprayed onto” this treated core to contact the treated core as claimed in paragraph [0051] or, as is more generally described in paragraph [0038], the modified calcium carbonate (A)/first treated core is mixed with the vulcanization promoter (C). The vulcanization promoters utilized in Korenaga et al. read upon the claimed second materials (paragraphs [0034]-[0038] and [0051]). As such, it appears that each and every limitation of claim 10 is taught by the reference. By addressing the introductory teaching that is found only in paragraph [0013] of the reference, it is not clear why the previously cited paragraphs as discussed above are not still quite appropriately applied to the claimed method.
Regarding the rejection of claim 10 over the teaching of Williams, applicant’s arguments have been fully considered, but they are not persuasive. Applicant argues against Examples 13 and 19 individually. However, Example 19 is further treatment that follows the production of the “treated calcium carbonate mineral product of Example 13”. As such, it is not sufficient to consider the examples separately as they are clearly and explicitly interrelated and practiced together. Example 13 is understood to teach the claimed providing a calcium core and applying a first layer steps as set forth in the claim. This first treated core material produced by Example 13 is then contacted with a second material as claimed in Example 19. As such, when properly considered as set forth in the reference, Examples 13 and 19 anticipate the claimed invention. Absent persuasive arguments to the contrary, it is not clear why this teaching in Williams is not understood to be proper.
Conclusion
THIS ACTION IS MADE FINAL. 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 Jeff Wollschlager whose telephone number is (571)272-8937. The examiner can normally be reached M-F 7:00-3:30.
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, Christina Johnson can be reached at 571-272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
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