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 .
Response to Preliminary Amendment
The preliminary amendment submitted on 11 March 2024 has been entered. After entry of the amendment, claims 1-20 are currently pending in the application.
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 1-20 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, it is unclear as to the types of mineral materials and dispersing agent encompassed by the claim and therefore the claim is vague and indefinite. The phrase "wherein the aqueous suspension obtained in step c) has a pH value which is at least 0.10 above the pH value of a comparative aqueous suspension which is obtained by the same process but without carrying out step b)", used in claim 1, is unclear, since the relative term referring to "a comparative aqueous suspension" lacks any clear definition that would allow the skilled person to establish which technical features are meant. Said lack of clarity is further enhanced by the fact that neither the mineral nor the dispersant are defined to any extent. Also the phrase “comparative aqueous suspension which is obtained by the same process but without carrying out step b)" is confusing as it is not clear as to how it can be obtained by the same process if not all of the process steps are carried out. If step b) is not conducted then it clearly would not be the same process, it would be a difference process. Clarification is requested.
In claim 13, the phrase “claim 1 any one of the preceding claims” is confusing and therefore renders the claim vague and indefinite as it is unclear as to which claim this claim is supposed to depend from.
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.
Claim 15 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ravet et al (US Patent No. 4,842,651 A).
The reference teaches, in claim 1, a method of pre-treating a rough pigmentary mineral material containing a swelling clay, comprising the steps of:
(i) obtaining a rough pigmentary mineral material containing a swelling clay; and
(ii) contacting said rough mineral material prior to grinding with a pre-treating agent comprising at least one carboxylate ethylenic acid containing polymer or copolymer, in an amount sufficient to provide a pigmentary mineral material suspension after grinding which comprises at least 75% by weight of said mineral material wherein said contacting step comprises:
(a) impregnating substantially dry rough pigmentary mineral material with said pre-treating agent with agitation,
(b) adding water to said impregnated mineral material up to an amount at most equal to 25% by weight with regard to said impregnated mineral material,
(c) mixing said water containing impregnated mineral material to produce a viscous paste state or a granular particle state,
(d) treating said viscous paste or said granular particles with an aqueous solution of an alkali or alkaline earth hydroxide to obtain a pH of about 9 to form a fluid aqueous suspension, and
(e) collecting said fluid aqueous suspension.
Claim 13 teaches grinding or abrading said collected fluid aqueous suspension.
The instant claim is met by the reference.
As for claim 15, the reference teaches a process wherein a dispersant and a hydroxide are added to an aqueous suspension of a mineral material and subjected to grinding, the claim is met. As the reference teaches the same process it would possess the property of reducing the specific grinding energy. Applicants are referred to the 2006 CAFC decision regarding Abbott Labs v Baxter Pharm Products Inc. The CAFC held that the new property of a prior art process does not render the process claim patentable. The CAFC reasoned that a claimed process having the same steps as a prior art process is not patentable simply because the claimed process identifies a new advantageous property of the prior art process. The CAFC stated their cases consistently held that a reference may anticipate even when the relevant properties of the thing disclosed where not appreciated at the time of the instant invention.
Claim 15 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Buri et al (US Patent Application Publication No. US 2014/0213711 A1).
The reference teaches, in claim 1, a high solids aqueous suspension of mineral material obtained by the process comprising the steps of: a) providing at least one mineral material, b) preparing an aqueous suspension comprising the at least one mineral material of step a), c) grinding the aqueous suspension of the mineral material of step b), d) concentrating the aqueous suspension of ground mineral material of step c) by flash cooling in a flash cooler comprising an inlet and an outlet, wherein the temperature of the aqueous suspension at the inlet of the flash cooler is from 70 to 105.degree. C., and the temperature of the aqueous suspension at the outlet of the flash cooler is less than 60 to 30.degree. C., to obtain an aqueous suspension having a final solids content of 80 to 85 wt %, wherein at least one dispersing agent is added to the aqueous suspension of step b), wherein the at least one dispersing agent is added completely before grinding step c), or stepwise before and during grinding step c), or before and during and/or after grinding step c). Claim 7 teaches an aqueous suspension of mineral material according to claim 1, wherein before, during, or after step c), but before step d), at least one earth alkali oxide and/or hydroxide is added to the aqueous suspension of step b).
The instant claim is met by the reference.
As for claim 15, the reference teaches a process wherein a dispersant and a hydroxide are added to an aqueous suspension of a mineral material and subjected to grinding, the claim is met. As the reference teaches the same process it would possess the property of reducing the specific grinding energy. Applicants are referred to the 2006 CAFC decision regarding Abbott Labs v Baxter Pharm Products Inc. The CAFC held that the new property of a prior art process does not render the process claim patentable. The CAFC reasoned that a claimed process having the same steps as a prior art process is not patentable simply because the claimed process identifies a new advantageous property of the prior art process. The CAFC stated their cases consistently held that a reference may anticipate even when the relevant properties of the thing disclosed where not appreciated at the time of the instant invention.
Allowable Subject Matter
Claims 1-14 and 16-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
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.
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, 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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July 21, 2026
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