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 § 103
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 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.
Claims 1-8, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over He (US 2006/0086837 A1). Mining Link (“Three Springs,” https://www.mininglink.com.au/mine-details/three-springs) is cited as an evidentiary reference.
Regarding claims 1-3, He teaches the grinding of talc particles in a ball mill (([0024]) to produce a powder having a surface area of 123.4 m2/g and an average particle size of 80-120 nm ([0072]). In each case, the values of this ground talc product fall within or overlap the respectively claimed ranges of “no less than about 35 m2/g,” and “no less than about 40 m2/g,” and “no greater than about 2.0 µm,” “no greater than about 5.0 µm,” “no greater than about 1.5 µm,” and “no greater than about 4.0 µm,” establishing prima facie cases of obviousness. While the measurement method of TEM, applied in He, is different than the laser/sedigraph methods described by the claim, the particle sizes determined by TEM are multiple orders of magnitude smaller than the maximum value as claimed, and TEM is a highly precise microscopy technique which would not be reasonably construed to mis-judge the average particle size of a medium to a significant degree. It is therefore the Office’s position that the particle size of the talc within He meets the claimed particle size ranges despite not explicitly mentioning measurement according to laser or sedigraph.
He differs from claims 1 and 3 because it is silent with regard to the claimed crystallinity index and d95, d75, and d25 characteristics.
In the same field of endeavor, the French company Imerys owns and operates the Three Springs Talc mine within Australia (which Imerys purchased from its previous owner, Rio Tinto, in 2011, see Mining Link first paragraph); furthermore, the Three Springs Talc mine produces 240,000 tons of talc per year which are used in the plastics industry (see Mining Link first paragraph). It is prima facie obvious to substitute equivalents based on their art-recognized suitability for an intended use (see MPEP 2144.06). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to utilize talc from the Three Springs Talc mine in Australia, as said material was widely commercially available.
The instant Specification utilizes Talc from the Three Springs Talc mine within the inventive examples (c.f. instant Specification Example 1, p. 81). Furthermore, as described above, He teaches a ball milling process which is substantially identical to the claimed process (c.f. the rejection of claim 4, above). Finally, products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, and/or are produced by an identical or substantially identical process, a prima facie case of obviousness has been established. See MPEP 2112.01. The talc from the Three Springs Talc mine, processed according to the milling procedure according to He, would therefore necessarily possess all of the claimed characteristics.
Regarding claim 4, He teaches the grinding of talc particles in a ball mill ([0024]), and teaches the use of classification equipment in conjunction therewith ([0024]) which reads on the claimed “dry milling” and “classifying” steps.
Regarding claims 5 and 17, He teaches that the milling beads have diameters ranging from about 0.2 mm to about 10 mm ([0024]), which encompasses and therefore anticipates the claimed ranges of “about 2 mm to about 10 mm” and “about 4 mm to about 6 mm.”
Regarding claim 6, Repeating known steps to obtain a desired a result is not inventive. Citing the Supreme Court’s teaching in KSR that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” the court found that repetition of previously known steps “is merely the logical result of common sense application of the maxim “try, try again.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330-31 (Fed. Cir. 2009). Accordingly, one of ordinary skill in the art would have been motivated by ordinary creativity and common sense to repeat the milling steps on the coarse particulate fraction as many times as necessary until the desired particle size is successfully achieved.
Regarding claim 7, as described above, it would have been obvious to one having ordinary skill in the art at the time of filing to utilize talc from the Three Springs Talc Mine in Australia as the feedstock for the Talc grinding process of He. products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The talc from the Three Springs Talc mine would therefore necessarily possess all of the claimed characteristics.
Regarding claim 8, He teaches polymer nano-talc composites comprising the inventive talc (Abstract).
Regarding claim 10, He teaches the mixing of the inventive talc with polyurethane precursors within the method of producing the inventive composition ([0061]).
Regarding claim 11, He is silent with regard to the specific improvement characteristics as claimed; nevertheless, He teaches the formation of a composition containing all of the claimed ingredients via a process which is substantially identical to the process as claimed. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition or are produced by an identical or substantially identical process, a prima facie case of anticipation has been established. See MPEP 2112.01. The claimed improvement characteristics will therefore necessarily be present in the composition of He, as applied above.
Regarding claims 15-16 and 22, as described above, He teaches talc having a particle size of 80-120 nm ([0072]), which falls within the claimed ranges, establishing prima facie cases of obviousness.
Regarding claim 18, He teaches that the grinding media may be made of ceramic ([0024]).
Regarding claims 19 and 21, He teaches that the polymer composition may include between 1 and 30 wt% of the talc ([0062]). The compositional amount of the polymeric component (C) is not explicitly bounded within the same passage but is implicitly included in amounts up to 29 wt%, given that the required components comprise at least 71 wt% of the composition. The amount of up to 29 wt% of the polymeric component with respect 1-30 wt% of talc to overlaps the claimed range of “no less than about 10 phr,” establishing a prima facie case of obviousness.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over He (US 2006/0086837 A1) in view of Ishii (US Patent No. 8,575,246 B2).
Regarding claim 20, Shibuya as modified teaches all of the limitations of claim 8 as described above. Shibuya teaches the incorporation of additional minerals such as calcium carbonate ([0100]), but differs from claim 20 because it is silent with regard to the particular incorporation of precipitated silica or clay minerals.
In the same field of endeavor, Ishii teaches a flame retardant thermoplastic resin composition (Abstract), which may be polycarbonate-based (col. 2, lines 51-53, similar to Shibuya at [0100]), which includes fillers such as calcium carbonate, silica, and clay minerals (col. 22, lines 39-54). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (See MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to substitute silica and/or clay minerals in place of calcium carbonate within the flame retardant polycarbonate composition of Shibuya, as Ishii teaches them as suitable therefor.
Allowable Subject Matter
Claims 9, 13-14, and 23 are objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed July 29, 2026, with respect to the rejections of claims under 35 U.S.C. 112(b) and 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of He, as described above.
Applicant's remaining arguments have been fully considered but they are not persuasive.
Applicant argues that the data provided in the instant specification rebuts the conclusion that He’s TEM particle size measurements are comparable to the claimed sedimentation and laser techniques; however, the data provided only illustrates that there are differences between those two techniques, and does not provide evidence that TEM is somehow inaccurate or incapable of providing a clear evaluation of the true particle sizes of the analyzed material. Furthermore, as described above and previously, the particle sizes in He, determined by TEM, are multiple orders of magnitude smaller than the maximum value as claimed. TEM is a highly precise microscopy technique which would not be reasonably construed to mis-judge the average particle size of a medium to a significant degree. The Office therefore maintains that the particle size of the talc within He meets the claimed particle size ranges despite not explicitly mentioning measurement according to laser or sedigraph.
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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762
