DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Preliminary Amendment
The preliminary amendment submitted on 20 June 2024 has been entered. After entry of the amendment claims 1-19 are currently pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, it is unclear as to what is meant by “Production” in the preamble. Is applicant claiming a method or a product by process? Clarification is requested. The phrase “the Penniman process” lacks proper antecedent basis. Also it is unclear as to what it meant by the Penniman process. It is unclear as to how the pigment can be produced according to the Penniman process if no separate nucleation step takes place when it appears according to the specification that a separate nucleation step is done. If a step were omitted it wouldn’t be proper to refer to a process that requires that step. Clarification is requested.
As for claim 3, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation “1 to 250 g/l” and the claim also recites “in particular from 40 to 85 g/l which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
As for claim 5, the phrase “the proportion” lacks proper antecedent basis. Also claim 5 recites the broad recitation “1 to 250 g/l” and the claim also recites “in particular from 40 to 50 g/l which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
As for claim 6, it recites the broad recitation “44 to 46 g/l” and the claim also recites “in particular 45 g/l which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
As for claim 9, it recites the broad recitation “50 to 250 oC” and the claim also recites “in particular to from 100 to 200 oC” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
As for claim 10, it recites the broad recitation “1 to 200 l/h” and the claim also recites “in particular from 10 to 40 l/h” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
As for claim 13, it recites the broad recitation “5 to 150 hours” and the claim also recites “in particular over a period of 50 to 120 hours” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
As for claim 16, the phrase “the processability” lacks proper antecedent basis.
As for claim 19, the term “etc.” renders the claim indefinite because the claim include(s) elements not actually disclosed (those encompassed by "etc."), thereby rendering the scope of the claim unascertainable. See MPEP § 2173.05(d).
Reference Cited By The Examiner
US Patent No. 11,104,807 B2 teaches the production of an iron oxide pigment using metal salts, the process comprising contacting iron; a water-containing haematite nucleus suspension containing haematite nuclei which have a particle size of 100 nm or less and a specific BET surface area of from 40 m2/g to 150 m2/g; an iron(II) nitrate solution and oxygen-containing gas at temperatures of 70 to 120° C. to produce a liquid reaction mixture which contains at least one liquid phase and haematite suspended therein, wherein the contacting comprises introducing the oxygen-containing gas into the liquid reaction mixture.
The process requires a nucleation step.
Allowable Subject Matter
Claims 1-19 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J GREEN whose telephone number is (571)272-1367. The examiner can normally be reached Monday-Thursday from 6:30-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
ajg
July 22, 2026
