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 in the reply filed on 6/01/2026 is acknowledged. The traversal is on the ground(s) that there is a lack of a search burden for the examiner. This is not found persuasive because a different search and consideration will be required for any composition that reads on the claims as compared to a method of making the specified composition or its use as a filler or coating or paper. As shown below in an updated search and usage of the Wang reference, a detergent composition directly reads on the claims in an anticipatory manner, but would not constitute a method of making paper with a filler or coating utilizing the same composition. The arguments have not been found to be persuasive.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Groups II-IX, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/01/2026.
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.
Claim 8 is 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.
Regarding claim 8, the limitations of the independent claim 1 for compound B is an amount of less than 25%. Claim 8 then introduces two alternative values of either less than 20% (which is not indefinite) or greater than 0.2%. The second option of the two is for a value of greater than 0.2, but is indefinite as the independent claim says less than 25%. Therefore a teaching of 30% would satisfy the range of claim 8 (which should be narrower in scope as further limiting) but would not read on the range as given by claim 1.
Correction is required.
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.
Claim(s) 1-8 are rejected under 35 U.S.C. 102a1 as being anticipated by Wang et al, US Patent publication 2014/0066352.
Regarding claim 1, Wang teaches an aqueous suspension of mineral particles [0190] comprising water [0190];
at least one mineral material M [0190];
at least one alpha sulphonated polymer prepared in water an in the absence of a phosphorus compound by a polymerization reaction of at least one monomer A (acrylic acid [0196] mixed with sulfite) in the presence of at least one imitator compound of at least on Sulphur compound T comprising Sulphur in oxidation state IV (hydrogen sulfites [0160-0162 and 0196], and completely or partially neutralized solely by means of at least one monovalent ion [0140 and 0493];
at least one compound B of sulpho-carboxylic acid in the amount of less than 25% molar relative to the Sulphur IV (claim 14 has carboxylic acid with monomers of sulfonate moieties of as low as 1% and example 4 includes a carboxylic groups with a sulfonic monomer group of 23% [0500]).
Regarding claims 2 and 3, Wang further teaches that the particle size of items in the solution are less than 30 microns [0304] and that the clay (mineral) is dispersed within the detergent [0190].
Regarding claim 4, while Wang does not explicitly utilize the phrase of a mono sulphonated polymer, the sulfonating reactions described are directed to different forms of hydrogen sulfite and sulfur dioxide which would produce the claimed substitution upon reactions [0143-0144].
Regarding claim 5, Wang further teaches that monomer A can be acrylic acid [0196].
Regarding claim 6, Wang further teaches that the amount of sulfite utilized is preferably 2-15% of the monomers [0160-.0162].
Regarding claim 7, Wang further teaches that compound B is a sulpho-carboxyl-alkyl (see claim 14).
Regarding claim 8, Wang further teaches that the amount of B is 1-49% (see claim 14) which will reads on the limitation of greater than 0.2%.
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/873912, 18/703795, and 18/716358 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the minor difference in the mineral being produced by wet griding or the extra neutralization options of a monovalent ion and a divalent ion would still be read by the claims of the instant application. The additional limitations of the copending applications would still be read upon by the instant limitations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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