DETAILED ACTION
Claims 1-8 are pending.
Claims 1-8 are rejected.
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 .
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. US 7341704 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
The present claims require a surface-treated calcium carbonate comprising calcium carbonate subjected to surface treatment with a fatty acid-based surface treatment agent,wherein the fatty acid-based surface treatment agent is at least one compound selected from the group consisting of fatty acids and fatty acid salts, and relational expressions (a) to (f) below are satisfied.
The patent claims meet all limitations of the present claims. Specifically, the patent claim 1 recites:
A surface-treated calcium carbonate that has been treated with at least one hydrophobic organic surface treating agent such as saturated fatty acids, unsaturated fatty acids, wherein the surface-treated calcium carbonate satisfies the following formulae (a), (b), (c) and (d): 20≤Sw≤200 (m2/g) (a)
1.0≤As≤7.5 (mg/m2) (b)
0.003≤Dxp≤0.03 (µm) (c)
50≤Dyp/Dxp≤180 (d);
the patent claim 5 recites the surface-treated calcium carbonate, wherein alkali metal salts contained in the surface-treated calcium carbonate satisfy the following formula (1): 0.03≤Is≤3 (µmol/m2) (1), which overlap the range of the presently claimed.
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).
Given that the patent claim discloses an identical or substantially identical surface treated calcium carbonate, with identical or substantially identical structure, therefore, it is clear, or alternative, it would be obvious to one of ordinary skill in the art that the surface treated calcium carbonate of the patent would necessarily and inherently meet the claimed limitation: LC>55 (%), LC is a lightness maintenance ratio (%) that is determined using the following formula: LC = (an L value of a paste obtained by mixing the surface-treated calcium carbonate heated at 160°C for 12 hours and diisononyl phthalate at a mass ratio of 1 to 2) / (an L value of a paste obtained by mixing the calcium carbonate prior to heating and diisononyl phthalate at a mass ratio of 1 to 2) x 100.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. US 7341704 B2 in view of Utsumi et al., US 10, 336,888 B2 (Utsumi).
The present claims require a surface-treated calcium carbonate comprising calcium carbonate subjected to surface treatment with a fatty acid-based surface treatment agent,wherein the fatty acid-based surface treatment agent is at least one compound selected from the group consisting of fatty acids and fatty acid salts, and relational expressions (a) to (f) below are satisfied.
The patent claims meet all limitations of the present claims. Specifically, the patent claim 1 recites:
A surface-treated calcium carbonate that has been treated with at least one hydrophobic organic surface treating agent such as saturated fatty acids, unsaturated fatty acids, wherein the surface-treated calcium carbonate satisfies the following formulae (a), (b), (c) and (d): 20≤Sw≤200 (m2/g) (a)
1.0≤As≤7.5 (mg/m2) (b)
0.003≤Dxp≤0.03 (µm) (c)
50≤Dyp/Dxp≤180 (d);
the patent claim 5 recites the surface-treated calcium carbonate, wherein alkali metal salts contained in the surface-treated calcium carbonate satisfy the following formula (1): 0.03≤Is≤3 (µmol/m2) (1), which overlap the range of the presently claimed.
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).
The patent claim does not explicitly disclose LC>55 (%), LC is a lightness maintenance ratio (%) that is determined using the following formula: LC = (an L value of a paste obtained by mixing the surface-treated calcium carbonate heated at 160°C for 12 hours and diisononyl phthalate at a mass ratio of 1 to 2) / (an L value of a paste obtained by mixing the calcium carbonate prior to heating and diisononyl phthalate at a mass ratio of 1 to 2) x 100.
With respect to the difference, Utsumi teaches surface-treated calcium carbonate useful in a curable resin (Utsumi, Abstract). Utsumi specifically teaches performance having excellent heat resistance and color fastness (Utsumi, Abstract).
As Utsumi expressly teaches, by blending the surface-treated calcium carbonate synthesized using compact limestone with a curable resin, performance with excellent heat resistance, color fastness, strength and elongation is retained over a long period of time, for example in the field of sealants filled in exterior wall joints in buildings, and the effects of not only preventing peeling over a long period of time but also not ruining designs because an adhesive existing in joints between tiles does not discolor are obtained in the field of tile adhesives of housing exterior walls (Utsumi, column 4, lines 15-27).
Utsumi is analogous art as Utsumi is drawn to surface-treated calcium carbonate useful in a curable resin.
In light of the motivation of preparing surface-treated calcium carbonate with heat resistance and color fastness, as taught by Utsumi, it therefore would have been obvious to a person of ordinary skill in the art to prepare the surface-treated calcium carbonate of the patent claim, as taught by Utsumi, and prepare surface-treated calcium carbonate with heat resistance and color fastness, in order to avoid discoloring during application.
Although there are no disclosures on the amounts of lightness maintenance (heat resistance and color resistance) as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here 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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of lightness maintenance (heat resistance and color resistance), including over the amounts presently claimed, in order to avoid discoloring during application, and thereby arrive at the claimed invention.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 25, it is suggested to amend “amount (cumulative value of increases in pore volume / log(average pore diameter))” to “amount, cumulative value of increases in pore volume / log(average pore diameter)”.
Appropriate correction is required.
Claim Rejections - 35 USC § 102/103
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kasahara et al., US 7,341,704 B2 (Kasahara).
Kasahara discloses a surface-treated calcium carbonate that has been treated with at least one hydrophobic organic surface treating agent such as saturated fatty acids, unsaturated fatty acids, wherein the surface-treated calcium carbonate satisfies the following formulae (a), (b), (c) and (d):
20≤Sw≤200 (m2/g) (a)
1.0≤As≤7.5 (mg/m2) (b)
0.003≤Dxp≤0.03 (µm) (c)
50≤Dyp/Dxp≤180 (d),
wherein: Sw: BET specific surface area determined by nitrogen adsorption method (m2/g);
As: reduced heat amount per unit specific surface area calculated by the following equation (mg/m2): (reduced heat amount mg per 1 g of the surface-treated calcium carbonate at 200˚C to 500˚C)/Sw;
Dxp: average pore diameter (.mu.m) at which an increased amount of mercury penetration [integration of increased amounts of pore volume/log (average pore diameter)] reaches the maximum value (Dys) in distribution of pore in the pore range of 0.001 to 0.1 µm in a method of mercury penetration;
Dyp: maximum value of an increased amount of mercury penetration (ml/g); and Dyp/Dxp: amount of an average pore diameter,(Kasahara, claim 1).
Kasahara further discloses the surface-treated calcium carbonate further satisfied the following formula (I), 0.03≤Is≤3 (µmol/m2) (Kasahara, column 7, bottom paragraph),
Wherein Is: content of alkali metal per unit specific surface area, Is is more preferably in the range of 0.15 to 2 µmol/m2 (Kasahara, column 8, 2nd paragraph).
Furthermore, given that the patent claim discloses an identical or substantially identical surface treated calcium carbonate, with identical or substantially identical structure, therefore, it is clear that the surface treated calcium carbonate of the patent would necessarily and inherently or alternatively, it would be obvious for the surface-treated calcium carbonate to meet the claimed limitation: LC>55 (%), LC is a lightness maintenance ratio (%) that is determined using the following formula: LC = (an L value of a paste obtained by mixing the surface-treated calcium carbonate heated at 160°C for 12 hours and diisononyl phthalate at a mass ratio of 1 to 2) / (an L value of a paste obtained by mixing the calcium carbonate prior to heating and diisononyl phthalate at a mass ratio of 1 to 2) x 100.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 2, as applied to claim 1, Kasahara further discloses preferably, the surface-treated-calcium carbonate further satisfies:
0.005≤Dxp≤0.025 (µm) (g)
60≤Dyp/Dxp≤150 (h) (Kasahara, column 7, 5th paragraph).
Regarding claims 3-8, as applied to claims 1-2 respectively, Kasahara further discloses a resin composition comprising the surface-treated calcium carbonate and a resin (Kasahara, claim 9);
wherein the resin is a resin for paint (Kasahara, claim 11);
wherein the resin is a resin for plastisol (Kasahara, claim 12);
wherein the resin is a resin for sealant (Kasahara, claim 14);
wherein the resin is a resin for adhesive (Kasahara, claim 14).
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.
Claim(s) 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kasahara in view of Utsumi et al., US 10, 336,888 B2 (Utsumi).
Regarding claim 1, Kasahara teaches a surface-treated calcium carbonate that has been treated with at least one hydrophobic organic surface treating agent such as saturated fatty acids, unsaturated fatty acids, wherein the surface-treated calcium carbonate satisfies the following formulae (a), (b), (c) and (d):
20≤Sw≤200 (m2/g) (a)
1.0≤As≤7.5 (mg/m2) (b)
0.003≤Dxp≤0.03 (µm) (c)
50≤Dyp/Dxp≤180 (d),
wherein: Sw: BET specific surface area determined by nitrogen adsorption method (m2/g);
As: reduced heat amount per unit specific surface area calculated by the following equation (mg/m2): (reduced heat amount mg per 1 g of the surface-treated calcium carbonate at 200˚C to 500˚C)/Sw;
Dxp: average pore diameter (.mu.m) at which an increased amount of mercury penetration [integration of increased amounts of pore volume/log (average pore diameter)] reaches the maximum value (Dys) in distribution of pore in the pore range of 0.001 to 0.1 µm in a method of mercury penetration;
Dyp: maximum value of an increased amount of mercury penetration (ml/g); and Dyp/Dxp: amount of an average pore diameter,(Kasahara, claim 1).
Kasahara further teaches the surface-treated calcium carbonate further satisfied the following formula (I), 0.03≤Is≤3 (µmol/m2) (Kasahara, column 7, bottom paragraph),
Wherein Is: content of alkali metal per unit specific surface area, Is is more preferably in the range of 0.15 to 2 µmol/m2 (Kasahara, column 8, 2nd paragraph).
Further regarding claim 1, Kasahara does not explicitly disclose LC>55 (%), LC is a lightness maintenance ratio (%) that is determined using the following formula: LC = (an L value of a paste obtained by mixing the surface-treated calcium carbonate heated at 160°C for 12 hours and diisononyl phthalate at a mass ratio of 1 to 2) / (an L value of a paste obtained by mixing the calcium carbonate prior to heating and diisononyl phthalate at a mass ratio of 1 to 2) x 100.
With respect to the difference, Utsumi teaches surface-treated calcium carbonate useful in a curable resin (Utsumi, Abstract). Utsumi specifically teaches performance having excellent heat resistance and color fastness (Utsumi, Abstract).
As Utsumi expressly teaches, by blending the surface-treated calcium carbonate synthesized using compact limestone with a curable resin, performance with excellent heat resistance, color fastness, strength and elongation is retained over a long period of time, for example in the field of sealants filled in exterior wall joints in buildings, and the effects of not only preventing peeling over a long period of time but also not ruining designs because an adhesive existing in joints between tiles does not discolor are obtained in the field of tile adhesives of housing exterior walls (Utsumi, column 4, lines 15-27).
Utsumi is analogous art as Utsumi is drawn to surface-treated calcium carbonate useful in a curable resin.
In light of the motivation of preparing surface-treated calcium carbonate with heat resistance and color fastness, as taught by Utsumi, it therefore would have been obvious to a person of ordinary skill in the art to prepare the surface-treated calcium carbonate, as taught by Utsumi, and prepare surface-treated calcium carbonate with heat resistance and color fastness, in order to avoid discoloring during application.
Although there are no disclosures on the amounts of lightness maintenance (heat resistance and color resistance) as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here 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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of lightness maintenance (heat resistance and color resistance), including over the amounts presently claimed, in order to avoid discoloring during application, and thereby arrive at the claimed invention.
Regarding claim 2, as applied to claim 1, Kasahara in view of Utsumi further teaches preferably, the surface-treated-calcium carbonate further satisfies:
0.005≤Dxp≤0.025 (µm) (g)
60≤Dyp/Dxp≤150 (h) (Kasahara, column 7, 5th paragraph).
Regarding claims 3-8, as applied to claims 1-2 respectively, Kasahara in view of Utsumi further teaches a resin composition comprising the surface-treated calcium carbonate and a resin (Kasahara, claim 9);
wherein the resin is a resin for paint (Kasahara, claim 11);
wherein the resin is a resin for plastisol (Kasahara, claim 12);
wherein the resin is a resin for sealant (Kasahara, claim 14);
wherein the resin is a resin for adhesive (Kasahara, claim 14).
Conclusion
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
