DETAILED ACTION
Response to Preliminary Amendment
The preliminary amendment submitted on 22 April 2024 has been entered. After entry of the amendment, claims 1-12 and 14-19 are currently pending in the application.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-5 and 16-18 in the reply filed on 20 January 2026 is acknowledged. Accordingly claims 6-12, 14-15 and 19 are withdrawn from consideration as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 (or as subject to pre-AIA 35 U.S.C. 102) 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 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 1-2 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fourty et al (US Patent No. 6,348,536 B1).
US 6,348,536 B1 is the English language equivalent of EP 971988 B1 which was cited previously by the Examiner in the restriction requirement.
The reference teaches, in column 2, line 60 – column 3, line 14, The mineral powder to which the invention relates is in particular a talc, kaolin or mica powder, and is characterized by: a particle size distribution such that the median diameter of the particles D50 lies substantially between 0.5 and 5 microns, the cutoff diameter D95 is less than 10 microns, and the cutoff diameter D98 is less than 20 microns, a specific surface area (BET) greater than 10 m2/g, and a high lamellarity index greater than 2.8 and preferably greater than 4. The measurement of the diameter is done by sedigraph.
As for claim 1, the reference teaches a BET surface area and lamellarity that meets the claimed limitations.
As for claim 2, the reference teaches a D95 of less than 10 microns by sedigraph which meets limitation (b).
As for claim 4, the reference teaches a D50 substantially between 0.5 and 5 microns which meets limitation (b) of the claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 103 (or as subject to pre-AIA 35 U.S.C. 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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Fourty et al (US Patent No. 6,348,536 B1).
The reference was discussed previously.
The instant claim is obvious over the reference.
As for claim 3, the reference teaches a specific surface area (BET) greater than 10 m2/g, and a high lamellarity index greater than 2.8 and preferably greater than 4 which overlaps the claimed ranges and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
Claims 1 and 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over PCT International Publication No. WO 2018/187638 A1.
The reference teaches a mica particulate having a BET surface area of about 0.5 m²/g to about 5 m²/g (paragraph [0102]) and a lamellarity of greater than about 2.8 (paragraph [090]).
The instant claims are obvious over the reference.
As for claim 1, the reference teaches a BET that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05. The lamellarity meets the claimed lamellarity limitation.
As for claim 3, the reference meets limitations (a) and (b) as the reference overlaps the claimed BET surface area and lamellarity and overlapping ranges are deemed to be obvious.
As for claim 4, paragraph [0102], teaches a d50 laser ranging from about 5 µm to about 200 µm preferably from about 5 µm to 50 µm which overlaps limitation (a) and paragraph [0103] teaches a d50 sedigraph ranging from about 1 µm to about 9 µm which overlaps limitation (b). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
Allowable Subject Matter
Claims 5 and 16-18 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.
The following is a statement of reasons for the indication of allowable subject matter: The prior art fails to teach or fairly suggest the limitations recited in these claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J GREEN whose telephone number is (571)272-1367. The examiner can normally be reached Monday-Thursday from 6:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached at (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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/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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February 12, 2026