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 without traverse of claims 1-13 in the reply filed on 10/27/2025 is acknowledged.
Claims 14-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Specification
The abstract of the disclosure is objected to because it is more than 150 words long and more than one paragraph. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 12-13 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 12 recites the limitation "the aqueous suspension" in claim 1. There is insufficient antecedent basis for this limitation in the claim. Furthermore, it is not clear what the viscosity of a suspension refers to where the content of magnesium oxide relative to the water is not specified.
Regarding claim 13, the limitation “selected from the group including inorganic” is unclear because some of the elements the group are organic compounds such as the limitation “organic and inorganic compounds” and “organofunctional titanates”. Furthermore, it is unclear what the limitations of the form “boron:”, “calcium”, “antimony:”, “phosphorus:” and “titanium:” refer to because they are broader in scope than the species of compound including these elements. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 and 8-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,110,233 (hereafter ‘233) in view of Ishibashi et al. (U.S. App. Pub. No. 2010/0183877).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Regarding claim 1, ‘233 claims a high purity magnesium oxide having a BET surface area of 70-200 m2/g, a d50 average particle diameter of not more than 10 microns, a chloride content of not more than 0.1%, a calcium content of 0.1%, an iron content of not more than 0.005%, a content of impurities of Ti, Co, Mo, V, Sb and Ba of not more than 1 ppm and of Pb, Cd, As, Hg of not more than 0.1 ppm. (claim 1). ‘233 claims a content of Mn of not more than 2 ppm (claim 9).
‘233 does not claim Zn, Sr, Al, F, P, Cr, Ni, K, Li, Si, B and Na.
Ishibashi et al. teaches a magnesium oxide particle aggregate having a particle size of 1 micron or less having a total impurity content of 100 ppm or less and specific impurities for Si, Al, Ca, Fe, V, Cr, Mn, Ni, Zr, B and Zn of not more than 10 ppm. (Abstract). It is the object of Ishibashi et al. to prevent contamination with impurities to be able to use the material is applications requiring high purity such as fluorescent materials. (par. [0001], [0010]-[0013]).
It would have been obvious to one of ordinary skill in the art to minimize the content of impurities from elements disclosed in Ishibashi et al. to below 10 ppm as well as those not specifically enumerated such as F, Li and Na, such that the overall content is less than 100 ppm.
One of ordinary skill in the art would have found it obvious to optimize the purity of the MgO composition order to have a higher quality material in order to be able to use the material in applications having high purity requirements as taught in Ishibashi et al., thereby creating a MgO product having increased commercial success.
‘233 does not specifically claim that the magnesium oxide includes primary particles and agglomerates thereof.
Ishibashi et al. teaches a magnesium oxide which is in for the form of a particle aggregate (i.e. including primary particles) (Abstract).
It would have been obvious to one of ordinary skill in the art to make high purity magnesium oxide in the form of particle aggregates in view of the teachings in Ishibashi et al. that such aggregates may suitably be used in the applications taught in in the reference requiring high purity magnesium oxide.
Regarding claim 2, ‘233 claims a chloride content of not more than 0.1% (claim 1).
Regarding claim 3, ‘233 claims an iron content of not more than 0.003% (claim 8).
Regarding claims 8-9, ‘233 claims an average particle diameter of not more than 2 microns (claim 3) and where a 10% diameter is not more than 2 microns and a 90% diameter is not more than 30 microns. (claim 10).
Regarding claim 10, ‘233 claims a 45 micron (i.e. 325 mesh) sieve residue of not more than 2%.
Regarding claim 11, ‘233 claims a citric acid activity of not more than 40 s (claim 1).
Regarding claim 12, ‘233 claims a viscosity of an aqueous suspension of not more than 30 cP).
Regarding claim 13, ‘233 claims organic and inorganic surface modifiers in amounts of 0.1 to 5% by weight. (claim 12).
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 1-3 and 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over Gordon et al. (RU 2690808) in view of Ishibashi et al. (U.S. App. Pub. No. 2010/0183877).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Regarding claim 1, Gordon et al. discloses a high purity magnesium oxide having a BET surface area of 70-200 m2/g, a d50 particle diameter determined by laser diffraction of not more than 10 microns, an iron content of not more than 0.005% (i.e. 50 ppm), a content of Ba, Ti, Co, Mo, V, Sb and Ba of not more than 1 ppm, a content of Pb, Cd, As, Hg of not more than 0.1 ppm, a chloride content of more than 2% and a content of Ca of not more than 0.1. (page 4, 2nd full paragraph). Gordon et al. further discloses a content of sulfate of not more than 0.01% (claim 7). Gordon et al. therefore discloses MgO particles having values for impurities which overlap with the presently claimed ranges. The magnesium oxide particles are formed of agglomerates including primary particles. (page 5).
Gordon et al. does not disclose value for impurities for Zn, Mn, Sr, Al, F, P, Cr, Ni, K, Li, Si, B and Na.
Ishibashi et al. teaches a magnesium oxide particle aggregate having a particle size of 1 micron or less having a total impurity content of 100 ppm or less and specific impurities for Si, Al, Ca, Fe, V, Cr, Mn, Ni, Zr, B and Zn of not more than 10 ppm. (Abstract). It is the object of Ishibashi et al. to prevent contamination with impurities to be able to use the material is applications requiring high purity such as fluorescent materials. (par. [0001], [0010]-[0013]).
It would have been obvious to one of ordinary skill in the art to minimize the content of impurities from elements disclosed in Ishibashi et al. to below 10 ppm as well as those not specifically enumerated such as F, Li and Na, such that the overall content is less than 100 ppm.
One of ordinary skill in the art would have found it obvious to optimize the purity of the MgO composition order to have a higher quality material in order to be able to use the material in applications having high purity requirements as taught in Ishibashi et al., thereby creating a MgO product having increased commercial success.
Regarding claims 2-3, Gordon et al. discloses chloride and ion content overlapping with the ranges as discussed in the rejection of claim 1, above.
Regarding claim 8, Gordon et al. discloses a d50 particle diameter of not more than 10 microns, overlapping with the presently claimed range. (page 4, 2nd paragraph).
Regarding claim 9, Gordon et al. teaches that the mass fraction of particles of 45 or more is 0.1 or less. (page 4, 2nd paragraph). Based on the broad teaching in Gordon et al. regarding d50 particle diameters of 10 microns or less, one of ordinary skill in the art would have found it obvious to have a particle size distribution such lying between 2 and 30 microns and the d10 and d90 values.
Regarding claim 10, Gordon et al. teaches that the mass fraction of particles of 45 or more is 0.1 or less. (page 4, 2nd paragraph). 325 mesh is equal to 44 microns and therefore the residue content would be substantially the same.
Regarding claim 11, Gordon et al. disclose a citric acid activity number (referred to as the lemon number) of not more than 40 s. (page 4, 2nd full paragraph).
Regarding claim 12, Gordon et al. teaches a dynamic viscosity of an aqueous suspension of not more than 30 cP. (page 4, 2nd full paragraph).
Regarding claim 13, Gordon et al. teaches modifying the surface of the magnesium oxide with a treatment agent including silane coupling agents in an amount in the range of 0.1 to 5.0 wt%. (page 7).
Claims 1-4 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ishibashi et al. (U.S. App. Pub. No. 2010/0183877).
Regarding claims 1-3, Ishibashi et al. teaches a magnesium oxide particle aggregate (i.e. including primary particles) having a particle size of 1 micron or less (Abstract) and the BET surface area of the particles 13.6 m2/g (Table 1), both of which overlap with the presently claimed range
The particles are disclosed as having a total impurity content of 100 ppm or less and specific impurities for Si, Al, Ca, Fe, V, Cr, Mn, Ni, Zr, B and Zn of not more than 10 ppm. (Abstract). It is the object of Ishibashi et al. to prevent contamination with impurities to be able to use the material is applications requiring high purity such as fluorescent materials. (par. [0001], [0010]-[0013]).
It would have been obvious to one of ordinary skill in the art to minimize the content of impurities from elements disclosed in Ishibashi et al. to below 10 ppm as well as those not specifically enumerated such as F, Li and Na, such that the overall content is less than 100 ppm.
One of ordinary skill in the art would have found it obvious to optimize the purity of the MgO composition order to have a higher quality material in order to be able to use the material in applications having high purity requirements as taught in Ishibashi et al., thereby creating a MgO product having increased commercial success.
Regarding claim 4, Ishibashi et al. teaches a surface area of 13.6 m2/g (Table 1), which lies within the presently claimed range.
Regarding claim 8, Ishibashi et al. teaches a particle diameter of less than 1 micron. (Abstract).
Regarding claim 9, Ishibashi et al. teaches a D10 diameter of 0.23 (i.e. less than 2 microns) and a D90 diameter of 0.88 (i.e. less than 30 microns).
Regarding claim 10, it would have been obvious to one of ordinary skill in the art to optimize the residue of the after passing the power through a 325 mesh where Ishibashi et al. discloses a D90 diameter of 0.88 which suggests almost no particles would be caught in a mesh that is 44 microns in size.
Allowable Subject Matter
Claims 5-7 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 11/13/2025