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 .
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.
Information Disclosure Statements
The Information Disclosure Statements filed on 3 June 2025 and 10 May 2024 have been received and considered by the Examiner.
Specification
The abstract of the disclosure is objected to. Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Interpretation
Claim 4 recites the limitation “wherein the crystallization step further includes a heating step”. The use of the word “includes” suggests that the heating step is wholly within the crystallization step and therefore needs to meet all the limitations of the crystallization step.
However, specification [0074] suggests that the heating step is to be performed separately and after the crystallization step on material that has been isolated from the crystallization step. While not wholly consistent with the use of the word “includes” in claim 4, for the purposes of compact prosecution this alternate interpretation will also be considered.
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 5-7 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 4 recites the limitation “wherein the crystallization step further includes a heating step” and claim 1 limits the temperature of the crystallization step to 50 °C to 80 °C. However, claim 5 then recites that the heating step has a temperature of 50 °C to 250 °C. Because the “heating step” is included in the “crystallization step” it is unclear how a temperature above 80 °C for the heating step is consistent with the limitations of claim 1.
Claims 7 depends upon claim 5 and is likewise rejected.
Claim 6 requires that the heating step, which is included in the crystallization step, be performed for a time of 1 to 72 hours. However, it is unclear if these times count toward the “crystallization time” recited in claim 1 because they would result in products of crystallization and temperature that lie outside the ranges of claim 1.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4-6 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 recites the limitation that “the crystallization step further includes a heating step in which a crystallized magnesium carbonate is heated”. However, the crystallization step is already required to be carried out under heating conditions, which will necessarily require heating at least some crystallized magnesium carbonate for at least some period of time. Claim 4 therefore fails to further limit claim 1.
Claim 5 recites that the heating step has a temperature of 50 °C to 250 °C. Because claim 4 defines that the “heating step” is included in the “crystallization step”, claim 5 recites temperatures for the crystallization step that are not within the scope of claim 1.
Claim 6 recites that the heating time is 1 hour to 72 hours. Because at least one interpretation of the claim is that the heating time is included in the crystallization time, at least some of these times would necessitate a product of the crystallization temperature and the crystallization time to lie outside the range of 60 °C-h to 210 °C-h required by claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1 and 3-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mo (CN 104445297 A). The provided English machine translation of Mo (CN 104445297 A) is relied upon in the analysis below.
Regarding claim 1, Mo teaches a process for producing magnesium oxide that comprises:
a carbonation step in which carbon dioxide gas is blown into a magnesium compound suspension (calcined dolomite) to obtain a magnesium hydrogencarbonate aqueous solution (magnesium bicarbonate solution; [0016]);
a separating step in which the magnesium hydrogencarbonate aqueous solution is treated for solid-liquid separation (solid and liquid are separated to obtain a magnesium bicarbonate solution; [0016]);
a crystallization step in which magnesium carbonate is crystallized from an aqueous solution obtained in the separating step (pyrolyze at 75°C for 100 minutes until basic magnesium carbonate solid precipitates out; [0017]); and,
a calcination step in which the magnesium carbonate is calcinated to obtain magnesium oxide (Calcine basic magnesium carbonate at 760℃ for 75 minutes to obtain nano magnesium oxide; [0018]),
wherein the crystallization step is carried out under crystallization conditions such that a crystallization temperature is 75 °C and a product of the crystallization temperature and a crystallization time is 125 °C-h (75 °C for 100 minutes; [0017]).
Regarding claim 3, Mo teaches the process of claim 1, wherein the product of the crystallization temperature and a crystallization time is 125 °C-h (75 °C for 100 minutes; [0017]), which lies in the instantly claimed range.
Regarding claim 4, Mo teaches the process of claim 1, wherein in the crystallization step the crystallized magnesium oxide will also be heated as crystallization continues, which is interpreted as meeting the limitations of a heating step required by claim 4.
Regarding claim 5, Mo teaches the process of claim 4, where the heating step that is being conducted with the crystallization step is being carried out at 75 °C ([0017]).
Regarding claim 6, Mo teaches the process of claim 4, where the heating step that is being conducted with the crystallization step is being conducted for 100 minutes ([0017]).
Regarding claim 7, Mo teaches the process of claim 5, where Mo also teaches the magnesium carbonate that has been heated in the heating step being calcined at a temperature of 750 °C ([0018]).
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.
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 2 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Mo (CN 104445297 A), as applied to claim 1 above, and further in view of Cesca et al. (US 3,615,201 A). The provided English machine translation of Mo (CN 104445297 A) is relied upon in the analysis below.
Regarding claim 2, Mo teaches the process of claim 1 but does not teach the crystallization temperature being in the range of 60 °C to 70 °C.
However, Cesca also teaches the crystallization of magnesium carbonate from a solution of magnesium and bicarbonate (col. 2, lines 25-40), and further teaches that the crystallization (precipitation) may be conducted preferably at 60-65 °C (col. 2, lines 41-43).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Mo such that the crystallization step is performed at 60-65°C, as taught by Cesca. One of ordinary skill in the art would have been motivated to do so because Cesca teaches that these temperatures are preferable for an analogous crystallization of magnesium carbonate.
Because claims 4-7 may require a separate heating step, these following alternative rejections are provided (see Claim Interpretation).
Regarding claims 4 and 5, Mo teaches the process of claim 1, but does not teach a separate heating step.
However, Cesca also teaches the crystallization of magnesium carbonate from a solution of magnesium and bicarbonate (col. 2, lines 25-40), as well as the subsequent calcination of magnesium carbonate to magnesium oxide (col. 2, lines 69-72). Cesca further teaches that before calcining the magnesium carbonate should be dried by heating at a temperature of about 200 °C (col. 2, lines 68-69).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Mo to include a heating step wherein the crystallized magnesium carbonate is heated at 200 °C in order to dry it before being calcined, as taught by Cesca, thereby meeting the limitations of claims 4 and 5. One of ordinary skill in the art would have been motivated to do so because they would simply be combining known methods for producing magnesium oxide from magnesium carbonate to yield predictable results. MPEP 2143(A).
Regarding claim 6, modified Mo teaches the method of claim 4, but both Mo and Cesca are silent on the length of time the magnesium carbonate is heated in order to dry it.
However, it is well known to persons of ordinary skill in the art that the time of heating will affect the extent of drying. Absent new and unexpected results, it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to optimize the time at which the magnesium carbonate is heated in order to balance the time expended on this step with the desired water content of the product.
The courts have also found that “where 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). See MPEP 2144.05 II. Therefore, the claimed range of heating time merely represents an obvious variant and/or routine optimization of the heating step disclosed in the cited prior art.
Regarding claim 7, modified Mo teaches the process of claim 5, and Mo also teaches the magnesium carbonate being calcined at a temperature of 750 °C ([0018]), which lies in the instantly claimed range.
Pertinent Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Doerner et al. “The Bicarbonate Process for the Production of Magnesium Oxide”, Technical paper 684, United States Department of the Interior, 1946.
Doerner discloses various features of the claimed invention, including studies on the effects of time and temperature for various steps (see pages 29-33).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
