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 .
The preliminary amendment filed 10/7/2024 has been entered. Claims 1-20 have been canceled. New claims 21-41 have been added and are pending in the application.
Claim Objections
Claim 29 is objected to because of the following informalities: “having” on line 2 should probably read “has” or similar limitation such that the claim includes a verb. Appropriate correction is required.
Claim 30 is objected to because of the following informalities: “decarbonisation” on line 2 should read “decarbonization” to be consistent with claim 23. Appropriate correction is required.
Claim 39 is objected to because of the following informalities: “biobased” on line 1 should read “bio-based” consistent with how the term is presented throughout the claims. Appropriate correction is required.
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 25 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. Claim 25 recites, “wherein the treatment layer comprises a surface-treatment agent selected from the group consisting of I) a phosphoric acid ester blend of one or more phosphoric acid mono ester and/or salts or reaction products thereof and/or one or more phosphoric acid di-ester and/or salts or reaction products thereof, or II) at least one saturated or unsaturated linear or branched carboxylic acid and/or salts or reaction products thereof, or at least one aliphatic carboxylic acid having a total amount of carbon atoms from C4 to C24 and/or salts or reaction products thereof, or III) at least one mono-substituted succinic anhydride consisting of succinic anhydride mono-substituted with a group selected from a linear, branch, aliphatic and cyclic group having a total amount of carbon atoms from at least C20 to C30 in the substituent and/or salts or reaction products thereof, and/or IV) at least one polydialkylsiloxane, and/or V) at least one cross-linkable compound comprising at least two functional groups, wherein at least one functional group is suitable for cross-linking a polymer resin and wherein at least one functional gorp is suitable for reacting with the precipitated calcium carbonate, and/or VI) at least one grafted polymer comprising at least one succinic anhydride group obtained by grafting maleic anhydride onto a homo- or co-polymer comprising butadiene units and optionally styrene units and/or salts or reaction products thereof, or VII) mixtures of one or more materials according to I) to VI)” (emphasis added), and although alternative expressions are permissive in the claims, they should be drafted in proper alternative format, i.e., “selected from A, B or C”, “one of A, B, and/or C", or in proper Markush claim format, i.e., “selected from the group consisting of A, B and C”, or in similar alternative format such that there is no uncertainty or ambiguity with respect to the question of scope or clarity of the claim(s). A claim that recites “selected from the group consisting of A1 and/or A2, or at least one B1 and/or B2, or at least one C1 or C2, and/or at least one D, and/or at least one E1 and/or at least one F1 and/or F2 or F3, or mixtures of one or more materials thereof” as in instant claim 25 is improper and renders the claim indefinite that that it is unclear as to what members are alternative members and/or members as part of the claimed Markush group. It is further noted that if a Markush group is so expansive (as in the instant case) that persons skilled in the art cannot determine the metes and bounds of the claimed invention due to an inability to envision all of the members of the Markush group, then the Markush group renders the claim indefinite. See MPEP § 2173.05(h). Hence, the Examiner takes the position that the Markush group recited on lines 4-22 renders the claim indefinite.
Claims 28-35 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 28 recites the limitation "the preparation" in line 1. There is insufficient antecedent basis for this limitation in the claim, especially given that the precipitated calcium carbonate may be prepared by more than one process.
Claims 29-35 do not remedy the above and hence are indefinite for the same reasons.
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.
Claims 21-41 are rejected under 35 U.S.C. 103 as being unpatentable over Brunner (US2020/0190286A1) in view of Karlsson (WO2009/013392A2) or Buri (US2009/0211493A1). Brunner teaches a surface-treated calcium carbonate-comprising filler material to be dispersed into at least one polyester (Abstract, Paragraph 0099; as in instant claim 36) to produce a mono or multilayer polyester film for use in various articles such as packaging products (Abstract, as in instant claims 40-41), wherein the surface-treated filler is present in an amount ranging from 30.01 to 80.0 wt.% based on the total weight of the layer comprising the surface-treated filler product and at least one polyester (Paragraph 0051, as in instant claim 38), and wherein the calcium carbonate-comprising filler material is a wet or dry ground calcium carbonate-comprising filler material that may be a natural ground calcium carbonate, a precipitated calcium carbonate (as in instant claim 21), a modified calcium carbonate, a surface-treated calcium carbonate, or a mixture thereof (Paragraph 0055). Brunner teaches that the ground calcium carbonate-comprising filler material has a weight median particle size d50 from 0.5 µm to 2.5 µm, preferably 0.5 µm to 2.0 µm (as in instant claims 1-2; Paragraphs 0056 and 0130); a top cut particle size d98 of ≤ 15µm, preferably ≤ 10 µm, and more preferably ≤ 7.5 µm (as in instant claims 21-22; Paragraph 0056); a specific surface area (BET) of from 0.5 to 150 m2/g, preferably 0.5 to 50 m2/g (as in instant claim 22; Paragraph 0056); and a residual moisture content of from 0.01 to 1 wt.%, preferably from 0.01 to 0.2 wt.%, based on the total dry weight of the at least one ground calcium carbonate-comprising filler (as in instant claims 21-22, and Paragraph 0144), wherein if PCC is used as the at least one ground calcium carbonate-comprising filler, the residual total moisture content is preferably from 0.01 to 0.2 wt.%, more preferably 0.05 to 0.17 wt.%, and most preferably 0.05 to 0.10 wt.%, based on the total dry weight of the at least one ground calcium carbonate-comprising filler material (as in instant claims 21-22; Paragraph 0145). Brunner also teaches that “the at least one polyester is selected from the group consisting of polyglycolic acid (PGA), polylactic acid (PLA), polycaprolactone (PCL), polyhydroxybutyrate (PHB), polyethylene terephthalate (PET), polybutylene terephthalate (PBT), polytrimethylene terephthalate (PTT), polyethylene naphthalate (PEN), polyethylene furanoate (PEF), bio-based polyesters, polyester-recycling materials and mixtures thereof” (as in instant claims 37 and 39; Paragraph 0052), and more particularly teaches that “the at least one polyester may be a partially or fully biobased polyester, i.e. a polyester in which the monomers are derived from renewable biomass sources” (as in instant claim 39; Paragraph 0105).
Hence, with respect to the claimed invention as recited in instant claims 21-22 and 36-41, Brunner teaches an article as recited in instant claims 40-41 formed from a polymer formulation as in instant claims 36-39 comprising a bio-based polyester resin as instant claims 37 and 39 and calcium carbonate filler dispersed therein as in instant claim 36 in a content as in instant claim 38, wherein the calcium carbonate filler may be precipitated calcium carbonate with a weight median particle size, a top cut particle size, a residual total moisture content, and a BET specific surface area as recited in instant claims 21-22 such that the only difference between the teachings of Brunner and the instantly claimed invention as recited in instant claims 22-21 and 36-41 is that Brunner does not teach that the precipitated calcium carbonate has a content of bio-based carbon determined according to DIN EN 16640:2017 of at least 50 wt.%, based on the total weight of carbon in the precipitated calcium carbonate as in instant claim 21 and more particularly at least 70 wt.% as in instant claim 22. However, given that Brunner does not limit the source of the raw materials utilized to synthesis the precipitated calcium carbonate to be dispersed as a filler in the polyester resin, and that Brunner specifically teaches that the polyester may be a partially or fully biobased polyester in which the monomers are derived from renewable biomass sources, e.g., content of bio-based carbon as determined according DIN EN 16640:2017 would be 100 wt.% based on the total weight of carbon in the fully biobased polyester, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to similarly utilize a bio-based precipitated calcium carbonate produced from renewable biomass sources in the invention taught by Brunner, such as by utilizing only (bio-based) carbon dioxide (CO2) generated in oxygen gasification of organic matter, e.g., during production of synthetic biobased hydrocarbons such as for biofuel production as taught by Karlsson or for producing biobased polymers, for carbonating calcium from a liquid containing calcium ions (e.g., “water softening” as in instant claims 23 and 30) as taught by Karlsson (thus utilizing a fully biobased carbon source resulting in a bio-based carbon content as recited in instant claims 21-22; Entire document, particularly Abstract, pages 1-3 and 7-10, Examples, and claims); or by utilizing a precipitated calcium carbonate containing carbonate having a high rate of (biobased) carbon 14 (14C) produced from CO2 resulting from the fermentation of sugars and/or the combustion of organic compounds such as fruit (“fresh” or bio-based CO2), with less than 50% by weight of “old” or fossil-based CO2 as the CO2 raw material as taught by Buri (e.g., a partial biobased or fully biobased carbon source thereby suggesting a bio-based carbon content of at least 50 wt.%, or at least 70 wt.%, respectively, based on the total weight of carbon in the precipitated calcium carbon at instantly claimed) to reduce the rate of fossil fuel CO2 emission upon decomposition of the produced synthetic calcium carbonate as taught by Buri (Entire document, particularly Abstract, Paragraphs 0012-0020, and 0029-0037, Examples), given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results and/or prima facie obviousness to use a known technique to improve similar devices in the same way. Hence, absent any clear showing of unexpected results, the claimed invention as recited in instant claims 21-22 and 36-41 would have been obvious over the teachings of Brunner in view of Karlsson or Buri.
With respect to instant claim 23, although Karlsson generally teaches water softening as noted above, with Buri similarly teaching reaction of the “fresh” CO2 with calcium present in a water reading upon “water softening” as instantly claimed, the Examiner notes that the claimed “obtained from water decarbonization and/or water softening” is a process limitation in the product claim that does not provide any additional material or structural limitations to the precipitated calcium carbonate; and hence, the claimed invention as recited in instant claim 23 would have been obvious over the teachings of Brunner in view of Karlsson or Buri.
With respect to instant claims 24-27, Brunner teaches that the ground calcium carbonate filler, which may be a precipitated calcium carbonate as discussed above and has particle size distribution as instantly claimed, is a treated calcium carbonate filler having a treatment layer on the surface thereof as in instant claim 24 (Abstract, Paragraph 0014, Claims 16 and 22), particularly a treatment layer comprising a surface treatment agent as recited in instant claim 25 (Paragraphs 0014 and 0147-0248), in an amount as recited in instant claim 26 (Paragraph 0014, Claims 16 and 22), with a moisture pick-up susceptibility as in instant claim 27 (Paragraph 0275); and given again that it would have been obvious to utilize a precipitated calcium carbonate produced from bio-based carbon/carbon dioxide as discussed in detail above, instant claims 24-27 would have been obvious over the teachings of Brunner in view of Karlsson or Buri for the same reasons as discussed above with respect to instant claim 1.
With respect to instant claims 28-35, Brunner teaches that the calcium carbonate filler may be ground and treated as instantly claimed, including grinding to a weight median particle size d50 and top cut particle size d98 as recited in instant claim 28 as discussed above, via wet grinding with a solids content between 20 and 80% or dry grinding with a solids content of more than 80 and up to 100 wt.% as in instant claims 28, 31-32, and 35 (Paragraphs 0076 and 0120-0123; Examples); with contact and mixing with a surface-treatment agent to form a treatment layer on the surface of the calcium carbonate as discussed above as in instant claim 33 (Paragraphs 0057, 0099, 0127, 0252-0253), and particularly at a temperature as in instant claim 34 (Paragraph 0214, based upon the incorporated teachings of EP2770017A1, see particularly Paragraph 0047 of the EP document, cited on IDS filed 6/15/2024), with a drying step or with dry grinding as in instant claim 35 (Paragraphs 0054, 0076, 0119-0121); and given again that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a bio-based precipitated calcium carbonate produced from renewable biomass sources in the invention taught by Brunner, as taught by Karlsson or Buri reading upon the claimed bio-based carbon content of instant claims 28-29 and providing step of instant claim 30 as discussed in detail above with respect to instant claims 21-23, the claimed invention as recited in instant claims 28-35 would have been obvious over the teachings of Brunner in view of Karlsson or Buri for the same reasons as discussed above with respect to instant claim 21.
With respect to instant claim 42, Brunner teaches that the polyester film or article formed therefrom is prepared by providing the polyester resin, the precipitated calcium carbonate, and optional additives, and mixing to form a composition that is then utilized to produce a film such as by extrusion (Paragraphs 0062-0070 and 0335-0365), and hence, the claimed invention as recited in instant claim 42 would have been obvious over the teachings of Brunner in view of Karlsson or Buri for the same reasons as discussed above with respect to instant claim 40 from which claim 42 depends.
Claims 21-41 are rejected under 35 U.S.C. 103 as being unpatentable over Rentsch (US2015/0240056A1, corresponds to EP2722368A1 cited on the IDS dated 6/15/2024 and in the related International Search Report) in view of Karlsson (WO2009/013392A2) or Buri (US2009/0211493A1). Rentsch teaches surface treated filler material comprising at least one calcium carbonate-containing filler material (Claim 26) surface treated with succinic anhydride(s) (Abstract), a polymer composition comprising the surface treated calcium carbonate-containing filler material dispersed in a polymeric resin in a content of 1 to 85 wt.% based on the total weight of the composition (Claim 31, as in instant claims 36 and 38), an article formed from the polymer composition such as hygiene products (Claim 35, as in instant claims 40-41), as well as method of forming the surface treated filler material, of forming the polymer composition, and of forming the article (Entire document, particularly Abstract, Claims), wherein the calcium carbonate-comprising filler material is selected from among ground calcium carbonate (GCC), precipitated calcium carbonate (PCC, as in instant claim 21), modified calcium carbonate (MCC) and mixture thereof (Paragraph 0068-0069), and has a weight median particle size d50 from 0.1 µm to 7 µm (Paragraph 0038), particularly 0.25 µm to 5 µm, preferably 0.7 µm to 4.0 µm (as in instant claims 1-2, particularly in light of the working examples; Paragraphs 0038, 0070 and 0096; Examples); a top cut particle size d98 of ≤ 15µm (as in instant claim 21, Paragraph 0039), particularly ≤ 12.5 µm, preferably ≤ 10 µm, and most preferably ≤ 7.5 µm (as in instant claims 21-22; Paragraph 0097); a specific surface area (BET) of from 0.5 to 150 m2/g (Paragraphs 0040 and 0098), preferably 0.5 to 50 m2/g (as in instant claim 22; Paragraph 0098); and a residual moisture content of from 0.01 to 1 wt.% (Paragraph 0041), particularly preferably from 0.01 to 0.2 wt.%, and preferably 0.02 to 0.15 wt.%, based on the total dry weight of the at least one ground calcium carbonate-comprising filler (as in instant claims 21-22, and Paragraphs 0073 and 0103), wherein if PCC is used as the at least one ground calcium carbonate-comprising filler, the residual total moisture content is preferably from 0.01 to 0.2 wt.%, more preferably 0.05 to 0.17 wt.%, and most preferably 0.05 to 0.10 wt.%, based on the total dry weight of the at least one ground calcium carbonate-comprising filler material (as in instant claims 21-22; Paragraph 0104). Rentsch teaches that the polymeric resin “is not restricted to a specific resin material as long as the polymer composition is suitable for the preparation of fibers and/or filaments and/or films and/or thread” (Paragraph 0211) and may be selected from the group comprising homopolymers and/or copolymers of polyolefins, polyamides, halogen-containing polymers and/or polyesters (Paragraph 0212), particularly those as recited in Paragraphs 0213-0230 (as in instant claim 37), including polymers that can be fully or partially biopolymers, wherein “[f]ull or partially based bio-based polymers are derived from renewable biomass sources, such as vegetable fats and oils, corn starch, pea starch or microbiota, aliphatic biopolyesters such as polyhydroxyalkanoates (PHA), polyhydroxybutyrate (PHB), polyhydroxyvalerate (PHV), polyhydroxyhexanoate (PHH), or polyesters such as polyethylene terephthalate (PET)” (Paragraph 0231; as in instant claim 39).
Hence, with respect to the claimed invention as recited in instant claims 21-22 and 36-41, Rentsch teaches an article as recited in instant claims 40-41 formed from a polymer formulation as in instant claims 36-39 comprising a bio-based polyester resin as instant claims 37 and 39 and calcium carbonate filler dispersed therein as in instant claim 36 in a content as in instant claim 38, wherein the calcium carbonate filler may be precipitated calcium carbonate with a weight median particle size, a top cut particle size, a residual total moisture content, and a BET specific surface area as recited in instant claims 21-22 such that the only difference between the teachings of Rentsch and the instantly claimed invention as recited in instant claims 22-21 and 36-41 is that Rentsch does not teach that the precipitated calcium carbonate has a content of bio-based carbon determined according to DIN EN 16640:2017 of at least 50 wt. %, based on the total weight of carbon in the precipitated calcium carbonate as in instant claim 21 and more particularly at least 70 wt.% as in instant claim 22. However, given that Rentsch (similar to Brunner above) does not limit the source of the raw materials utilized to synthesis the precipitated calcium carbonate to be dispersed as a filler in the polyester resin, and that Rentsch specifically teaches that fully or partially based biopolymers derived from renewable biomass sources such as biopolyesters can be utilized, e.g., content of bio-based carbon as determined according DIN EN 16640:2017 would be 100 wt.% based on the total weight of carbon in the fully biobased polyester, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to similarly utilize a bio-based precipitated calcium carbonate produced from renewable biomass sources in the invention taught by Rentsch, such as by utilizing only (bio-based) carbon dioxide (CO2) generated in oxygen gasification of organic matter, e.g., during production of synthetic biobased hydrocarbons such as for biofuel production as taught by Karlsson or for producing biobased polymers, for carbonating calcium from a liquid containing calcium ions (e.g., “water softening” as in instant claims 23 and 30) as taught by Karlsson (thus utilizing a fully biobased carbon source resulting in a bio-based carbon content as recited in instant claims 21-22; Entire document, particularly Abstract, pages 1-3 and 7-10, Examples, and claims); or by utilizing a precipitated calcium carbonate containing carbonate having a high rate of (biobased) carbon 14 (14C) produced from CO2 resulting from the fermentation of sugars and/or the combustion of organic compounds such as fruit (“fresh” or bio-based CO2), with less than 50% by weight of “old” or fossil-based CO2 as the CO2 raw material as taught by Buri (e.g., a partial biobased or fully biobased carbon source thereby suggesting a bio-based carbon content of at least 50 wt.%, or at least 70 wt.%, respectively, based on the total weight of carbon in the precipitated calcium carbon at instantly claimed) to reduce the rate of fossil fuel CO2 emission upon decomposition of the produced synthetic calcium carbonate as taught by Buri (Entire document, particularly Abstract, Paragraphs 0012-0020, and 0029-0037, Examples), given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results and/or prima facie obviousness to use a known technique to improve similar devices in the same way. Hence, absent any clear showing of unexpected results, the claimed invention as recited in instant claims 21-22 and 36-41 would have been obvious over the teachings of Rentsch in view of Karlsson or Buri.
With respect to instant claim 23, although Karlsson generally teaches water softening as noted above, with Buri similarly teaching reaction of the “fresh” CO2 with calcium present in a water reading upon “water softening” as instantly claimed, the Examiner notes that the claimed “obtained from water decarbonization and/or water softening” is a process limitation in the product claim that does not provide any additional material or structural limitations to the precipitated calcium carbonate, and hence the claimed invention as recited in instant claim 23 would have been obvious over the teachings of Rentsch in view of Karlsson or Buri.
With respect to instant claims 24-27, Rentsch teaches that the ground calcium carbonate filler, which may be a precipitated calcium carbonate as discussed above and has particle size distribution as instantly claimed, is a treated calcium carbonate filler having a treatment layer on the surface thereof as in instant claim 24 (Abstract, Paragraphs 0042 and 0047), particularly a treatment layer comprising a surface treatment agent as recited in instant claim 25 (Entire document, particularly Paragraphs 0058-0064, 0076, and 0105-0184) in an amount as recited in instant claim 26 (Paragraph 0064), with a moisture pick-up susceptibility as in instant claim 27 (Paragraphs 0025, 0085, and 0198); and given again that it would have been obvious to utilize a precipitated calcium carbonate produced from bio-based carbon/carbon dioxide as discussed in detail above, instant claims 24-27 would have been obvious over the teachings of Rentsch in view of Karlsson or Buri for the same reasons as discussed above with respect to instant claim 1.
With respect to instant claims 28-35, Rentsch teaches that the calcium carbonate filler may be ground and treated as instantly claimed, including grinding to a weight median particle size d50 and top cut particle size d98 as recited in instant claim 28 as discussed above, via dry grinding or wet grinding such as with a solids content of 25 wt.% as utilized in the examples (as in instant claims 28, 31-32, and 35 (Paragraphs 0100-0102, Examples); with contact and mixing with a surface-treatment agent to form a treatment layer on the surface of the calcium carbonate as discussed above as in instant claim 33 (Paragraphs 0036-0043 and 0084) at a temperature of preferably 50 to 150°C, most preferably from 60 to 120°C as in instant claim 34 (Paragraph 0084), with a drying step or with dry grinding as in instant claim 35 (Paragraphs 0100-0102, Examples); and given again that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a bio-based precipitated calcium carbonate produced from renewable biomass sources in the invention taught by Rentsch, as taught by Karlsson or Buri reading upon the claimed bio-based carbon content of instant claims 28-29 and providing step of instant claim 30 as discussed in detail above with respect to instant claims 21-23, the claimed invention as recited in instant claims 28-35 would have been obvious over the teachings of Rentsch in view of Karlsson or Buri for the same reasons as discussed above with respect to instant claim 21.
With respect to instant claim 42, Rentsch teaches that the polymer composition or article formed therefrom is prepared by providing the polymer resin(s) and the precipitated calcium carbonate, and mixing to form a composition or masterbatch that is then utilized to produce a polymer product such as those recited in Paragraph 0249 by known methods (Paragraphs 0066-0068 and 0241-0249), and hence, the claimed invention as recited in instant claim 42 would have been obvious over the teachings of Rentsch in view of Karlsson or Buri for the same reasons as discussed above with respect to instant claim 40 from which claim 42 depends.
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 21-29 and 31-42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21-22, 24-28, and 30-41 of copending Application No. 18/720627 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 21 is similarly directed to a calcium carbonate material having a weight median particle size d50 of ≤ 60 µm as in instant claim 21, a top cut particle size d98 of ≤ 500 µm as in instant claim 21, a residual total moisture content of ≤ 1.0 wt.% based on the total dry weight of the calcium carbonate material reading upon and/or rendering obvious the claimed range of ≤ 0.5 wt.% of instant claim 21, and a content of bio-based carbon determined according to DIN EN 16640:2017 of at least 50 wt.% based on the total weight of carbon in the calcium carbonate material as in instant claim 21, such that the only difference between copending claim 21 and instant claim 21 is that copending claim 21 does not specifically recite that the calcium carbonate material is a precipitated calcium carbonate as instantly claimed. However, given that calcium carbonate consists of naturally occurring calcium carbonate and precipitated (synthetic) calcium carbonate (PCC), the use of PCC in copending claim 21 would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention and hence instant claim 21 would have been obvious over copending claim 21, particularly given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
With respect to dependent claims 22, 24-29 and 31-42, the limitations thereof are recited by and/or obvious over copending claims 22, 24-28, and 30-41, with copending claim 22 reciting ranges reading upon and/or rendering obvious the ranges as recited in instant claim 22; copending claims 24-26 reciting the same limitations as in instant claims 24-26, respectively; copending claim 27 reciting a total moisture content range reading upon and/or rendering obvious the claimed moisture content of instant claim 27 and also reciting a moisture pick-up susceptibility as recited in instant claim 27; copending claim 28 reciting the same limitations as in instant claim 28; copending claim 30 reciting the same limitations as in instant claim 31; copending claim 31 reciting wet or dry grinding wherein a solids content as in instant claim 32 would have been obvious to one having ordinary skill in the art absent any evidence of criticality and/or unexpected results; copending claim 32 reciting the same limitations as instant claim 33; copending claim 33 reading upon the same temperature range as recited in instant claim 34; copending claim 34 reciting a step d) which is the same as the “step of drying” of instant claim 35, and a step e) of grinding of copending claim 34 reading upon the instantly claimed step of dry-grinding and/or wet-grinding as in instant claim 35; copending claims 35-38 and 40-41 reciting the same limitations as instant claims 36-41, respectively; and copending claim 42 reading upon the process of instant claim 42, wherein it is again noted that the instantly claimed precipitated calcium carbonate as filler would have been obvious over the calcium carbonate as filler of copending claim 42 as well as all of the copending claims dependent upon copending claim 21.
With respect to instant claim 23, although the copending claims do not recite that the calcium carbonate having a biomass content of at least 50 wt.% as in instant claim 21 “is obtained from water decarbonization and/or water softening” as instantly claimed, given again that the use of a precipitated calcium carbonate for the calcium carbonate in copending claim 21 would have been obvious to one having ordinary skill in the art as discussed in detail above, and that the claimed “obtained from water decarbonization and/or water softening” is a process limitation in the product claim that does not provide any additional material or structural limitations to the precipitated calcium carbonate of instant claim 21, the Examiner takes the position that instant claim 23 would have been obvious over copending claim 21 for the same reasons as discussed above with respect to instant claim 21 over copending claim 21.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 23 and 30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21 and 28, respectively of copending Application No. 18/720627, as presented above, and in further view of Karlsson or Buri. Copending claims 21 and 28 recite a calcium carbonate material having properties as recited in instant claim 21 from which instant claim 23 depends, and a process for the preparation thereof by providing the calcium carbonate having a content of bio-based carbon of at least 50 wt.% and grinding to a weight median particle size and top cut particle size as in instant claim 28 from which instant claim 30 depends, such that the difference between instant claims 23 and 30 and copending claims 21 and 28, respectively, is that the copending claims do not recite that the calcium carbonate material is a precipitated calcium carbonate as in the instant claims, and particularly obtained from water decarbonization and/or water softening as in instant claims 23 and 30. However, given again that precipitated calcium carbonate (PCC) is an obvious species of calcium carbonate material in the art as discussed above, and that bio-based PCC can be obtained from water softening as taught by Karlsson or Buri as discussed in detail above, and/or from water decarbonization as is well known in the art, instant claims 23 and 30 would have been obvious over copending claims 21 and 28, respectively, in view of Karlsson or Buri, given that it is prima facie obviousness to use a known technique to improve similar devices in the same way.
This is a provisional nonstatutory double patenting rejection.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Mennell (US2023/0150872A1) discloses a renewable biocarbon composition comprising from about 50 wt.% to about 99 wt.% total carbon, wherein the total carbon is at least 50% renewable as determined from measurement of the 14C/12C isotopic ratio of the total carbon, preferably the total carbon is at least 90% renewable and more preferably fully renewable, wherein the “total carbon within a biocarbon composition includes not only carbon derived from cellulose, hemicellulose, and lignin, but also carbon (if any) contained in other components present, such as metal carbonates (e.g., calcium carbonate).”
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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