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 .
Drawings
The drawings are objected to because according to 37 CFR 1.84(u): Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation "FIG." must not appear. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
In paragraphs [0060], [0101], and [0102]the term “Fig. 1” should be changed to “The figure” as when only 1 figure is present it must not be numbered and the abbreviation "FIG." must not appear.
In paragraph [0104] applicant refers to “figures” however there is only 1 figure present in the application.
Appropriate correction is required.
Claim Interpretation
In claims 1 and 13, the phrase “slight dust formation” is interpreted as the values recited in claims 17 and 18.
Claim Objections
Claim 19 is objected to because of the following informalities: The phrase “100 µm the particle size distributions” makes no sense as it appears that some text is missing. Appropriate correction is required.
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 1-22 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.
In claim 1, the phrase “the mean particle size” lacks proper antecedent basis.
In claim 3, it is unclear as to whether or not the terms “K-, Ca-, Na” refer to the feldspars. If so, applicant needs to use proper punctuation so that this is clear in the claim.
In claim 4, the phrase "and the like" renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim unascertainable. See MPEP § 2173.05(d).
In claim 5, the phrase “and/or mixtures of itself or others” is confusing and therefore vague and indefinite. How can it be a mixture of itself? Clarification is requested.
In claim 9, the phrase “the mixing process” lacks proper antecedent basis.
In claim 13, the phrase “as well as a paraffin oil” is confusing and therefore vague and indefinite. The phrase appears to state that the paraffin oil is an optional component.
In claim 16, the phrase "and the like" renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim unascertainable. See MPEP § 2173.05(d).
In claim 19, the term “preferably" renders the claim indefinite because it is unclear whether the limitations following the term are part of the claimed invention. See MPEP § 2173.05(d) and therefore the exact scope of the claim is unclear.
In claim 22, the phrase “selected from a group comprising” is improper Markush terminology thus rendering the claim indefinite.
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 1-3, 5-6, 8, 13, 15, 17-18 and 20-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sobottka (US Patent No. 5,366,645 A).
The reference teaches, in the abstract, column 2, lines 37 and the claims, a modified amorphous silica that is coated with paraffin oil, silicone oil, vegetable oil and/or ethylene glycol. Column 3, lines 47+ states that the modification produces a dust free end product. The average particle size is 1 to 20 microns (see column 3, lines 62+). According to the examples the modified amorphous silica is produced by mixing the components in a mixture.
The instant claims are met by the reference.
As for claim 1, the reference teaches an amorphous silica that can be coated with paraffin oil, silicone oil, vegetable oil and/or ethylene glycol in a mixing device. Therefore the reference suggests a combination of paraffin oil and silicone oil. The particle size is 1 to 20 microns. Although it is not measured using the recited methods it would appear that how it is measured would make no difference as the size would still be in the same range.
As for claim 2, the reference teaches silica which meets the oxide limitation.
As for claim 3, as quartz is essentially silica, this claim is met.
As for claim 5, this claim is met as the silane does not have to be selected in claim 1, just that if it is, it be selected from those types recited in claim 5.
As for claim 6, this claim is met as the silane does not have to be selected in claim 1, just that if it is, it be selected from those types recited in claim 6.
As for claim 8, the reference teaches the use of a Henschel type powder mixer and as this is a mixer with a rotating mixing tool, this claim is met.
As for claim 13, the reference teaches an amorphous silica that can be coated with paraffin oil, silicone oil, vegetable oil and/or ethylene glycol. Therefore the reference suggests a combination of paraffin oil and silicone oil. The average particle size is 1 to 20 microns. Although it is not measured using the recited methods it would appear that how it is measured would make no difference as the size would still be in the same range.
As for claim 14, the reference teaches silica which meets the oxide limitation.
As for claim 15, as quartz is essentially silica, this claim is met.
As for claims 17 and 18 as the reference teaches a filler having the same composition as instantly claimed it would inherently possess the recited properties absent evidence showing otherwise. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II.
As for claim 20, the modified amorphous silica may be added to polyolefin (column 3, lines 12+) thus meeting the composite material.
As for claim 21, the modified amorphous silica may be added to polyolefin (column 3, lines 12+) thus meeting the composite material having a binder (polyolefin).
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.
Claims 9-10 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Sobottka (US Patent No. 5,366,645 A).
The reference was discussed previously, above.
The instant claims are obvious over the reference.
As for claim 9, while the reference does not teach that the coating compound is fed into the mixer in phases, this is seen to be an obvious modification know to one of ordinary skill in the art. It would appear obvious that adding the components in phases would result in better mixing as large amounts of the coating material may not form a homogeneous mix for coating the particles. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
As for claim 10, it is within the level of ordinary skill in the art to determine the amounts of each component necessary to produce a material having the desired properties. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955).
As for claim 22, it is within the level of ordinary skill in the art to form whatever desired article is desired from the composition. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
Claims 1-6 and 13-21 are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al (US Patent Application Publication No. US 2010/0297041 A1).
The reference teaches, in paragraph [0041], solid particles which have a number weighted average particle size of about 10 nm (nanometers) to about 100 um (micrometers). According to paragraph [0046] examples of the solid particles include fumed silica, spherical silica, micronized teflon, acrylate polymers, bentonite, corn starch, diatomaceous earth, glyceryl starch, hectorite, hydrated silica, magnesium hydroxide, magnesium oxide, magnesium trisilicate, maltodextrin, montmorillonite, microcrystalline cellulose, rice starch, zinc laurate, zinc neodecanoate, zinc rosinate, attapulgite, dextran, silica silylate, soy flour, tin oxide, titanium hydroxide, trimagnesium phosphate, walnut shell powder, or mixtures thereof. They may be treated with lecithin, collagen, amino acids, mineral oil, silicone oil, metal soaps, alkyl silane, isotitanium triisostearate, PEG siloxanes, fluorosiloxane, fluorinated materials, polyethylene, magnesium myristate, lysine derivatives, active plant lipid extracts or various other agents either alone or in combination, which coat the powder surface and render the particles hydrophobic in nature.
The instant claims are obvious over the reference.
As for claim 1, the reference teaches various particles having a size ranging from 10 nm to about 100 µm such as fumed silica, spherical silica, corn starch, magnesium oxide, rice starch, dextran. See also paragraph [0045] which lists numerous other examples. They may be surface treated with lecithin, collagen, amino acids, mineral oil, silicone oil, metal soaps, alkyl silane, isotitanium triisostearate, PEG siloxanes, fluorosiloxane, fluorinated materials, polyethylene, magnesium myristate, lysine derivatives, active plant lipid extracts or various other agents either alone or in combination. Accordingly the reference suggests that a carrier particle having a size of less than about 100 µm can be coated with a mixture of silicone oil and mineral oil. The mineral oil meets the paraffin oil. Although the particle size is not measured using the recited methods it would appear that how it is measured would make no difference as the size would still be in the same range. As the reference teaches that the particles are surface treatment with the materials, it is obvious that a mixing device can be used to provide the treatment. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
As for claim 2, the reference teaches silica, magnesium oxide thus meeting the oxides limitation as well as trimagnesium phosphate which meets the phosphates, and various other particles which meets the natural or synthetic particles.
As for claim 3, the reference teaches kaolin, mica, etc.
As for claim 4, the reference teaches walnut shell powder, amino acids which would meet the bio based monomer as well as other renewable ground and/or crushed particles (corn starch, lipid extracts, etc.)
As for claim 5, this claim is met as the silane does not have to be selected in claim 1, just that if it is, it be selected from those types recited in claim 5.
As for claim 6, this claim is met as the silane does not have to be selected in claim 1, just that if it is, it be selected from those types recited in claim 6.
As for claim 11, it is within the level of ordinary skill in the art to determine the amounts of each component necessary to produce a material having the desired properties. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955).
As for claim 13, the reference teaches various particles having a size ranging from 10 nm to about 100 µm such as fumed silica, spherical silica, corn starch, magnesium oxide, rice starch, dextran. See also paragraph [0045] which lists numerous other examples. They may be surface treated with lecithin, collagen, amino acids, mineral oil, silicone oil, metal soaps, alkyl silane, isotitanium triisostearate, PEG siloxanes, fluorosiloxane, fluorinated materials, polyethylene, magnesium myristate, lysine derivatives, active plant lipid extracts or various other agents either alone or in combination. Accordingly the reference suggests that a carrier particle having a size of less than about 100 µm can be coated with a mixture of silicone oil and mineral oil. The mineral oil meets the paraffin oil. Although the particle size is not measured using the recited methods it would appear that how it is measured would make no difference as the size would still be in the same range.
As for claim 14, the reference teaches silica, magnesium oxide thus meeting the oxides limitation as well as trimagnesium phosphate which meets the phosphates, and various other particles which meets the natural or synthetic particles.
As for claim 15, the reference teaches kaolin, mica, etc.
As for claim 16, the reference teaches walnut shell powder, amino acids which would meet the bio based monomer as well as other renewable ground and/or crushed particles (corn starch, lipid extracts, etc.).
As for claims 17 and 18 as the reference teaches a filler having the same composition as instantly claimed it would inherently possess the recited properties absent evidence showing otherwise. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II.
As for claim 19, the reference teaches a size 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.
As for claim 20, the reference teaches a cosmetic comprising the particles which would meet the composite material.
As for claim 21, some of the components present in the cosmetic according to the examples can be considered to be a binder.
Allowable Subject Matter
Claims 7 and 12 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 and provided that the 112(b) rejection is overcome.
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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June 11, 2026
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