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 .
This application is in response to amendment filed on 03/05/2026.
Claims 20-46 are presently pending in this application. Applicant has amended claims 20, 24-26 and added new withdrawn claims 40-46. Claims 20-30 are under examination.
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 20-21 and 23-30 are rejected under 35 U.S.C. 103 as being unpatentable over Hagar et al (US PGPUB No.: 20110206746) in view of Yoshie et al (EP0275706) in further view of Stenzel et al (US PGPUB NO.: 20070100057).
Regarding Claims 20, 24, Hagar discloses dentifrice composition comprising silica particles as abrasive and wherein silica particles are generally precipitated silica particles (paragraphs 0026, 0078-0080, 0088, abstract, i.e., Zeodent). Hagar further discloses silica particles having an oil adsorption upto 100 cc/100g (paragraphs 0050, 0065, 0114, reads on limitation of 60-120 cc/100g), BET surface area from 10 to 425 m2/g (paragraphs 0067, 0114, reads on limitation of 10-40 m2/g), mercury intruded volume from 0.5 to 3 mL/g (paragraph 0069, reads on limitation of 0.75-2.00 cc/g). 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).
Hagar does not explicitly disclose or suggest precipitated silica comprising a mean primary particle size of greater than 80 nm and carbon content of less than 1 wt% based on total weight of the precipitated silica.
However, Yoshie discloses oral composition such as dentifrice composition utilizing silica type abrasive materials such as precipitated silica (i.e., Zeodent) having mean primary particle size of 500 nm or less (see page number 4-lines 38-43, 46-50), reads on greater than 80nm). 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 Hagar and Yoshie are both directed to dentifrice composition, therefore it would have been obvious to one of the ordinary skill in the art at before the effective filing date of applicant invention to modify the invention of Hagar to include the primary particle size of 500 nm or less of Yoshie which would provide good shape retentionability with low viscosity, good extrudability at low temperature and having excellent taste and effect as taught by Yoshie (see page number 3 lines 3-7).
Hagar in view of Yoshie do not explicitly disclose or suggest precipitated silica comprising carbon content of less than 1 wt% based on total weight of the precipitated silica.
However, Stenzel discloses precipitated silica which have carbon content from 0.1-20% by weight based on precipitated silica and carbon content of silica is measured by LECO (see paragraph 0020, overlaps claimed range of carbon of claim 20 and claim 24 ). 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).
Although there is no disclosure that the test method is conformity with measured by LECO SC832 carbon/sulfur analyzer, given that the (Stenzel) discloses carbon content measured by LECO as the presently claimed and absent evidence criticality how the carbon content is measured, it is an examiner's position that hardness disclosed by Stenzel to meet the claim limitation.
Given Hagar, Yoshie and Stenzel are directed to precipitated silica, therefore it would have been obvious to one of the ordinary skill in the art at before the effective filing date of applicant invention to modify the invention of Hagar and Yoshie with Stenzel to include the carbon content which would provide good dispersion performance and at the same time provide good dispersion coefficient and high level of reinforcement, giving very low tire abrasion value as taught by Stenzel (paragraph 0029).
Regarding Claim 21, Hagar discloses CTAB surface area from 10-250 m2/g (paragraphs 0068, 0114, reads on 10-35 m2/g). 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 23, Hagar discloses Einlehner value of less than 8.0 mg lost/100,000 revolutions (paragraphs 0004,0006, 0070, reads on less than 18 mg lost/100l revolutions). 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 claims 25-30, Hagar in view of Yoshie discloses precipitated silica particles having the primary particle mean size of less than 500 nm (reads on greater than 80 nm of claims 26, 29 greater than 90 nm of claims 25, 27, greater than 100 nm of claims 28, 30—see Yoshie page number 4-lines 38-43, 46-50), the BET Surface area of 10 to 425 m2/g (reads on BET surface of 10-26 m2/g of claims 25, 27, 10-30 m2/g of claims 26, 29, 10-23 m2/g of claims 28, 30—see Hagar paragraphs 0067, 0114), the total mercury intruded volume of 0.5 to mL/g (reads on total mercury intruded volume of 0.75-2.00 cc/g of claims 25, 28, 0.80-1.80 cc/g of claims 26, 27, 0.85-1.65 cc/g of claims 29-30-see Hagar paragraphs 0069), the oil adsorption of upto 100 cc/100g (reads on oil adsorption of 60-120 cc/100g of claims 25, 28-30, 70-110 cc/100g of claims 26-27—see Hagar paragraphs 0050, 0065, 0114). 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).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Hagar et al (US PGPUB No.: 20110206746) in view of Yoshie et al (EP0275706) in view of Stenzel et al (US PGPUB NO.: 20070100057) and in further view of Dolan et al (WO2018118382).
Regarding Claim 22, Hagar, Yoshie and Stenzel discloses precipitated silica as disclosed above in claim 20. Hagar, Yoshie and Stenzel do not explicitly disclose or suggest precipitated silica having pack density of 0.40-0.80 g/cm3 of claim 22.
However, Dolan discloses dentifrice composition containing abrasive source such as precipitated silica (abstract, page 10-lines 17-20) having pack density of 35-55 lb/ft3 (equivalent to 0.56-0.88 g/cm3, page 8 lines 29-32-reads on pack density of 0.40-0.80 g/cm3), BET Surface area of 0.01-10 m2/g (page 8-line 18-20), total mercury intrusion pore volume from about 0.5-1.7 cc/g (page 9-lnes 18-20), Oil adsorption from about 25-100 cc/100g (page 9-lines 30-32). 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).
Give Hagar, Yoshie, Stenzel and Dolan are directed to precipitated silica; therefore it would have been obvious to one of the ordinary skill in the art at before the effective filing date of applicant invention to modify the invention of Hagar, Yoshie and Stenzel to include pack density of 35-55 lb/ft3 of Dolan which would provide improved stannous compatibility as taught by Dolan (see page 1-lines 10-12).
Claims 20-30 are rejected under 35 U.S.C. 103 as being unpatentable over Dolan et al (WO2018118382) in view of Yoshie et al (EP0275706) and in further view of Stenzel et al (US PGPUB NO.: 20070100057).
Regarding claims 20 and 24, Dolan discloses dentifrice composition containing abrasive source such as precipitated silica (abstract, page 10-lines 17-20) having BET Surface area of 0.01-10 m2/g (page 8-line 18-20, reads on 10-40 m2/g), total mercury intrusion pore volume from about 0.5-1.7 cc/g (page 9-lnes 18-20, reads on 0.75-2.00 cc/g), Oil adsorption from about 25-100 cc/100g (page 9-lines 30-32, reads on 60-120 cc/100g). 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).
Dolan does not explicitly disclose or suggest precipitated silica comprising a mean primary particle size of greater than 80 nm of claim 20 and carbon content of less than 1.0 wt% based on total weight of precipitated silica.
However, Yoshie discloses oral composition such as dentifrice composition utilizing silica type abrasive materials such as precipitated silica (i.e., Zeodent) having mean primary particle size of 500 nm or less (see page number 4-lines 38-43, 46-50, reads on greater than 80 nm). 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 Dolan and Yoshie are both directed to precipitated silica, therefore it would have been obvious to one of the ordinary skill in the art at before the effective filing date of applicant invention to modify the invention of Dolan to include the primary particle size of 500 nm or less of Yoshie which would provide good shape retentionability with low viscosity, good extrudability at low temperature and having excellent taste and effect as taught by Yoshie (see page number 3 lines 3-7).
Dolan in view of Yoshie do not explicitly disclose or suggest precipitated silica comprising carbon content of less than 1 wt% based on total weight of the precipitated silica.
However, Stenzel discloses precipitated silica which have carbon content from 0.1-20% by weight based on precipitated silica and carbon content of silica is measured by LECO (see paragraph 0020, overlaps claimed range of carbon of claim 20 and claim 24). 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).
Although there is no disclosure that the test method is conformity with measured by LECO SC832 carbon/sulfur analyzer, given that the (Stenzel) discloses carbon content measured by LECO as the presently claimed and absent evidence criticality how the carbon content is measured, it is an examiner's position that hardness disclosed by Stenzel to meet the claim limitation.
Given Dolan, Yoshie and Stenzel are directed to precipitated silica, therefore it would have been obvious to one of the ordinary skill in the art at before the effective filing date of applicant invention to modify the invention of Dolan and Yoshie with Stenzel to include the carbon content which would provide good dispersion performance and at the same time provide good dispersion coefficient and high level of reinforcement, giving very low tire abrasion value as taught by Stenzel (paragraph 0029).
Regarding Claim 21, Dolan discloses CTAB surface area from 0 to about 10 m2/g (paragraphs page 10 lines4-5, reads on 10-35 m2/g). 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 22, Dolan discloses precipitated silica having pack density of 35-55 lb/ft3 (equivalent to 0.56-0.88 g/cm3-page 8 lines 29-32, reads on 0.40-0.80 g/cm3). 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 23, Dolan discloses Einlehner value of 8.0 to about 20 mg lost/100,000 revolutions (page 8-lines 24-25, reads on less than 18 mg lost/100K revolutions). 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 claims 25-30, Dolan in view of Yoshie discloses precipitated silica particles having the primary particle mean size of less than 500 nm (Yoshie- see page number 4-lines 38-43 and 46-50, reads on greater than 80 nm of claims 26, 29 greater than 90 nm of claims 25, 27, greater than 100 nm of claims 28, 30), the BET Surface area of 0.01-10 m2/g (Dolan-page 8-line 18-20 reads on BET surface of 10-26 m2/g of claims 25, 27, 10-30 m2/g of claims 26, 29, 10-23 m2/g of claims 28, 30), the total mercury intruded volume of 0.5-1.7 cc/g (Dolan-page 9-lnes 18-20, reads on total mercury intruded volume of 0.75-2.00 cc/g of claims 25, 28, 0.80-1.80 cc/g of claims 26, 27, 0.85-1.65 cc/g of claims 29-30), the oil adsorption of 25-100 cc/100g (Dolan-page 9-lines 30-32, reads on oil adsorption of 60-120 cc/100g of claims 25, 28-30, 70-110 cc/100g of claims 26-27). 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).
Response to Arguments
Applicant’s arguments, see applicant remarks on pages 7-11, filed on 03/05/2026 with respect to the rejections of Claims 20-21, 23-30 under 35 U.S.C. § 103 over Hagar et al (US PGPUB No.: 20110206746) in view of Yoshie et al (EP0275706), rejection of claim 22 over Hagar et al (US PGPUB No.: 20110206746) in view of Yoshie et al (EP0275706) and in further view of Dolan (WO2018118382), and rejections of Claims 20-30 under 35 U.S.C. § 103 over Dolan et al (WO2018118382) in view of Yoshie et al (EP0275706) persuasive and therefore the rejections are withdrawn.
However, upon further consideration and further amendment (which includes claim 20 limitation of carbon content of less than 1 wt% based on total weight of precipitated silica and claim 24 limitation of carbon content of 0-0.5 wt% based on total weight of precipitated silica) filed by applicant which constituted a new ground(s) of rejections of Claims 20-21, 23-30 under 35 U.S.C. § 103 over Hagar et al (US PGPUB No.: 20110206746) in view of Yoshie et al (EP0275706) in further view of Stenzel et al (US PGPUB NO.: 20070100057), rejection of claim 22 over Hagar et al (US PGPUB No.: 20110206746) in view of Yoshie et al (EP0275706) in view of Stenzel et al (US PGPUB NO.: 20070100057) and in further view of Dolan (WO2018118382), and rejections of Claims 20-30 under 35 U.S.C. § 103 over Dolan et al (WO2018118382) in view of Yoshie et al (EP0275706) and in further view of Stenzel et al (US PGPUB NO.: 20070100057) as set forth above and therefore applicant’s argument are moot in related to all the previously cited references taught by Hagar, Yoshie, Dolan which discloses precipitated silica comprising a mean primary particle size, a BET surface area; a total mercury intruded volume and oil absorption while as newly cited reference taught by Stenzel discloses carbon content of 0.1-20 wt% based on total weight of precipitated silica (overlaps claimed ranges of newly amended claimed limitation of carbon content of claim 20 and claim 24), therefore combination of Hagar, Yoshie and Stenzel and/or Dolan, Yoshie and Stenzel discloses presently claimed limitation.
Further, amendment to claims overcomes the claim objections of record.
Further, amendment to abstract overcomes the specification objection of record.
Further, amendment to the claim 24 overcomes the 112(b) rejections of record.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SMITA S PATEL whose telephone number is (571)270-5837. The examiner can normally be reached on 9AM-5PM EST M-W.
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). If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu Fung can be reached on 5712705713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SMITA S PATEL/Primary Examiner, Art Unit 1732 04/16/2026
Prosecution Insights