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, claims 1-10, in the reply filed on 12/1/25 is acknowledged. The traversal is on the ground(s) that the composition cannot be made without practicing the claimed process and that the single general inventive concept is novel and involves inventive step such that lack of unity does not arise. This is not found persuasive because the prior art teaches, at least as shown a posteriori below, that the claimed process is obvious as detailed below. Applicant’s argument that the Office has mischaracterized the technical feature is not persuasive since the product as claimed does not relate to a single general inventive concept under PCT Rule 13.1 since an active ingredient homogenized in clay does not contribute over the prior art as detailed below.
The requirement is still deemed proper and is therefore made FINAL.
Applicant’s election of the following species: essential oil as in claim 2; sodium hydroxide as in claim 6; and bentonite clay as in claim 7 in the reply filed on 12/1/25 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/5/2024 has been considered by the examiner.
Claim Objections
Claim 1 is objected to because of the following informalities: the second line from the end of the claim recites “such that the encapsulated composition comprising of the active ingredient homogenized with the clay is obtained”, however it is unclear why the word “of” is included. Is the structure that is an encapsulated composition as recited in the preamble of the claim the same total structure achieved by the claimed method of making and also a total structure comprising an active ingredient? Appropriate correction is required.
Claim 9 is objected to because of the following informality: cm3 should include the “3” as a superscript or otherwise indicated to be a superscript in the unit named.
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.
Claims 9 and 10 are 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.
Claim 9 recites that “the bentonite clay” has an average particle size, mass density, and cation exchange capacity set of quantitative characteristics, however it is unclear which bentonite clay in the process of preparing as detailed in claim 1 serves as the antecedent for the bentonite characterized as in claim 9. Are these claimed characteristics of an encapsulated product or of a bentonite intermediate and if an intermediate, at which point in the process of heating, mixing, etc. recited in claim 1? For instance is the clay prior to or after heating of step “a” having the claimed characteristic and is the clay compacted or swelled before or after heating, drying, and/or exposure to aqueous slurry?
Claim 10 recites “as detected by loss in weight method at 120 degrees Celsius”. The metes and bounds of this method nomenclature are unclear, and limitations are not imported from the specification into the claim. For the purpose of applying prior art, drying to a percent moisture less than any value in the claimed range of 5-8% is considered to meet the claim. Appropriate clarification is required.
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.
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 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over US2008/0193387A1 (“De Wolff”) in view of CN109010888 (“CN’888”) and CN107399739A (Qiu et al., hereafter “Qiu”).
The elected claims are drawn to a process comprising steps of (a) heating; (b) mixing; (c) decanting and adding acid; (d) preparing an aqueous slurry; (e) adjusting the pH; (f) blending; and (g) subjecting a mixture to drying, each step as further specified in the claims.
De Wolff teaches the administration of essential oil compositions comprising essential oil ingredients for pesticidal purposes (see abstract, in particular) using a carrier vehicle which may be a clay for instance (see [0064] and [0065])(limitations of claims 1 and 2). Bentonite in particular may be used for its swelling properties and ability to carry active agents (see [0154]). The solid carrier which may be a clay may be in combination with an alcohol component which may be isopropanol (see claims 11, 12, and 14 of De Wolff in particular)(limitation of claim 3). De Wolff’s solid carriers such as bentonite include 0.5-5% active ingredient in said carrier (see [0123]), and in a fluid carrier the carrier makes up 5-60% of the carrier and active combination for instance (see [0124]; see also [0126] and [0142]); these values generally overlap the ratios recited in claim 4, however De Wolff’s ratios pertain to final products and not intermediates as claimed; the patentability of an intermediate may be established by unexpected properties of an end product, however in the instant case it appears the claimed intermediate is a process of making step which does not demonstrate unexpectedly superior activity in the end product.
De Wolff does not specify a process for making the encapsulated composition comprising steps of heating, mixing, decanting, etc. of the carrier clay. CN ‘888 and Qiu cure this deficiency.
CN’888 teaches a bentonite [clay] deodorizer and its preparation process wherein bentonite [a clay] is suspended in water and stirred to form a slurry which is placed into a water bath, heated, stirred, reacted, heated, washed, dried, and baked to produce a modified bentonite (see “Novelty” paragraph of translation). The bentonite suspension (further limitation of claim 8) is mixed from bentonite in water with sodium carbonate to prepare a 20% slurry which is heated to 79 degrees Celsius and stirred for 90 minutes. A modified bentonite product is obtained which is then mixed in glycerol at a temperature of 250 degrees Celsius for 1.9 hours; the supernatant is decanted and washed in ultrapure water and ground to form a composition which is ground and mixed with scented flowers and additional plant components (see “Description” section of translation) and useful as a bentonite deodorizer product.
Regarding step “a”, CN’888 does not teach a single isolated step of heating a clay step at the temperature and time period claimed, however CN’888’s steps taken together teach a process which appears to be the same or substantially the same as the heating step claimed. “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here 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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.).” Accordingly, in the instant case, CN ‘888 is reasonably considered to render obvious a heating step for the time and temperature recited in claim 1a since the steps claimed are generally taught in the prior art and criticality has not been established.
Regarding step “b” mixing the heated clay with water in a ratio as claimed to obtain a suspension which is then separated into a sediment of clay and an aqueous layer, CN ‘888 is considered to teach a step the same or substantially the same as this step by its teaching of a slurry which is heated, stirred, reacted, heated, and washed centrifugally (“separated into a sediment of clay and an aqueous layer”). CN’888 specifies 80 parts by weight of bentonite powder and 125 parts by weight ultrapure water to which additional components are added to achieve a 20% slurry, a range the same or similar to a range of 1:5-1:10 of clay in water as in step “b” of claim 1. CN’888’s centrifugation step is considered to achieve a separation of suspension of clay into a sediment of clay and an aqueous layer functional result as recited in step “b” of claim 1.
Regarding step “c”, CN’888’s washing and drying after centrifugation is considered the same or substantially the same as decanting as instantly recited. This process of centrifugation and washing appears the same or substantially the same as step “c” recited in claim 1 (“decanting the aqueous layer”), as would have been reasonably recognized and understood of CN’888’s teaching by the terms of art and skill of the ordinary artisan.
CN’888 does not teach the addition of an acid as in step “c” of claim 1 or subsequent slurry of purified clay as in step ‘d” or pH adjustment as in step “e”.
Qiu cures this deficiency. Qiu teaches a diatomite purification method comprising steps of pulping, acid boiling, separating and washing, recycling waste solid and liquid, calcining and purifying, and cooling (see abstract, in particular). At Qiu’s step “c”, pertaining to separating and washing the slurry, the diatomite mineral is washed, centrifuged, and flocculating agent (acid) added and stirred, among disclosed separation and purification steps. Qiu at Qiu’s step “a” includes sodium hydroxide (also limitation of claim 6) addition to the diatomite slurry and pH adjustment to 8-10, a range overlapping the instantly recited pH aqueous slurry adjustment to 9-11 as in steps “d” and “e”.
Both CN’888 and Qiu pertain to preparation and isolation of natural mineral products (bentonite clay and diatomite respectively). It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to add Qiu’s acid washing (i.e., for purification such as by separating via formation of a flocculant) and sodium hydroxide pH adjustment to pH in a range overlapping the instantly claimed range in aqueous slurry steps of isolating a purified natural mineral product, with a reasonable expectation of success. One would have been motivated to do so to more fully remove undesired contaminants through a multi-step process of essentially acid washing and base washing to yield purified (isolated) clay product to CN ‘888 and Qiu’s desired ends.
Further regarding steps “f” and “g”, CN’888’s drying and grinding and stirring and mixing (i.e., with dried citron leaves, etc.) is considered to perform blending as in step “f” and “subjecting…to dry” as recited in step “g” to produce an encapsulated composition comprising active ingredient homogenized with clay as instantly claimed to be the effect of performing the aforementioned steps. Changing in sequence of adding ingredients or performing steps is considered an obvious variation (see MPEP 2144.04 IV(C), V, and VI).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over US2008/0193387A1 (“De Wolff”) in view of CN109010888 (“CN’888”) and CN107399739A (Qiu et al., hereafter “Qiu”) as applied to claims 1-4 and 6-8 above, and further in view of AU2014259596 (“Ziegelaar”).
The teachings of De Wolff, CN’888, and Qiu are delineated above. None of these specifies acid which is hydrochloric acid having a molarity in the range of 3-7 M as recited in claim 5.
Ziegelaar cures this deficiency. Ziegelaar teaches the treatment of kaolin for producing essentially a purified clay product. Ziegelaar specifies that the clay (kaolin) is de-gritted then leached with hydrochloric acid to produce a residue for subsequent treatment for eventual application in feed material (see abstract, in particular). Ziegelaar specifies that the leaching step may include use of hydrochloric acid having a molarity between 6 mol/L and 9 mol/L, preferably being about 6 mol/L (see [0018]) in a purification process.
CN’888 in particular and Ziegelaar both pertain to treatments of clay materials. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to treat CN’888’s clay (i.e, bentonite) with 6M hydrochloric acid as demonstrated by Ziegelaar in the successful treatment of Ziegelaar’s clay (i.e., kaolin). One would have been motivated to do so based on the state of the art technique for performing leaching in a clay purification process as taught by Ziegelaar.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over US2008/0193387A1 (“De Wolff”) in view of CN109010888 (“CN’888”) and CN107399739A (Qiu et al., hereafter “Qiu”) as applied to claims 1-4 and 6-8 above, and further in view of “Dieudonne” (“Hydromechanical behavior of compacted bentonite: from micro-scale analysis to macro-scale modelling”, Universite de Liege, Thesis submitted for the degree of Doctor of Philosophy in Applied Sciences, Presented by Anna-Catherine Dieudonne, June 2016; available 2/18/2026 at https://media.proquest.com/media/hms/PFT/2/6XrvZ?_s=ThLDyJ7JBkkZ9U5M1S5J%2FwpvKdU%3D).
The teachings of De Wolff, CN’888, and Qiu are delineated above. None of these specifies bentonite clay properties as in claim 9. Dieudonne cures this deficiency.
Dieudonne teaches the state of the art of bentonite materials. Dieudonne establishes the cation exchange capacity and specific surface of five reference bentonite materials, all of which are within the claimed cation exchange capacity of 60 to 150 meq/100 g as recited in claim 9. See Dieudonne page 14, Table 2.3 listing values of 111, 69, 77.3, 73, and 76-88 of the same units. Dieudonne’s Figure 2.1 demonstrating swelling properties as a function of dry density appears to illustrate mass density properties of the aforementioned reference materials to be the same or substantially the same as the range of 1.2 to 1.8 instantly claimed. Nevertheless, where Dieudonne discloses compaction and porosity measurements and processes, Dieudonne is considered to teach the state of the art with regard to bentonite clay materials and their treatments.
CN’888 and Dieudonne are directed to bentonite clay products including those purified and/or optimized for desirable physical and functional properties. It would have been prima facie obvious to one of ordinary skill in the art to look to Dieudonne to ascertain the state of the art with regard to cation exchange capacity, mass density, and average particle size characteristics in bentonite clay products so to achieve the desired properties (i.e., agglomeration, swelling) in the final product as taught by Dieudonne. One would have been motivated to do so based on Dieudonne’s detailed disclosure of these properties and/or similar characteristics of bentonite clays as state of the art at the time the invention was filed. Moreover, one would have been motivated to perform routine optimization procedures based on Dieudonne’s teaching for instance, that various cation exchange capacity values may be achieved with state of the art bentonite clay products.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US2008/0193387A1 (“De Wolff”) in view of CN109010888 (“CN’888) and CN107399739A (Qiu et al., hereafter “Qiu”) as applied to claims 1-4 and 6-8 above, and further in view of KR2022156151A (“Lee”; translation enclosed).
The teachings of De Wolff, CN’888, and Qiu are delineated above. None of these specifies drying to a quantitative extent as recited in claim 10.
Lee cures this deficiency. Lee teaches a method of essentially purifying bentonite for applications in cat litter (see abstract, in particular). Bentonite is dried at a temperature of 120-130 degrees Celsius for 40-50 minutes to adjust the moisture content to 7-9%. It is noted that 7% is less than 8% as in claim 10.
CN ‘888 in particular and Lee are directed to treatments of clay materials. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to dry the clay to a moisture content such as 7% in order to achieve desired purification and stability of a clay carrier product as suggested by Lee, in clays used in the methods of De Wolff, CN ‘888, and Qiu, with a reasonable expectation of success. One would have been motivated to do so to improve product quality based on Lee’s teaching of the state of the art with regard to dried bentonite [clay] products for desirable moisture absorption and coagulation properties.
Conclusion
No claim is allowed.
Similar claims are noted in copending Application No. 18/589,367, which will continue to be monitored for obviousness double patenting issues.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREA B CONIGLIO whose telephone number is (571)270-1336. The examiner can normally be reached Monday - Thursday 7:00 a.m. - 5:30 p.m..
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, Michael Hartley can be reached at 5712720616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AUDREA B CONIGLIO/ Primary Examiner, Art Unit 1617