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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 5/01/2026 is acknowledged.
Claims 9-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/1/2026.
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.
Claims 1-8 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.
Regarding claim 1 (and its dependents), the claims are unclear as to what constitutes the composite fiber having a “Horiba D90 of at least 10 microns”.
The term Horiba is not explained anywhere in the instant specification. It appears to be in reference to a particle size distribution of some kind, but is not clear on what the parameters are or what exactly is being measured.
For purposes on continued examination, this property will be considered met if the composite fiber after attachment with the mineral to the fiber has a measurement of greater than the claimed 10 or 20 micron.
Claim Rejections - 35 USC § 102/103
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.
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) 1-7 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hasegawa et al, WO 2021/045198 (translation provided).
Regarding claims 1 and 3, Hasegawa teaches a filler comprising composite fibers (see abstract), each composite fiber comprising mineral attached to a fiber (calcium carbonate, see calcium carbonate section), wherein the mineral is at least about 90 wt% based on the total weight of the composite fiber (“For example, the weight ratio of the fiber to the inorganic particles is 5/95”), the uncoated fiber has an average length of less than 300 µm (“The fiber length of the fiber to be composited is not particularly limited, but for example, the average fiber length can be about 0.1 μm to 15 mm, and may be 1 μm to 12 mm, 100 μm to 10 mm”) and the composite fiber has a Horiba d90 of at least 10 µm (see figures that are at scale of 10 microns demonstrating a value of more than 20 microns as understood in view of the 112 rejection above).
While the above rejection stands as anticipatory under the understanding of the limitations as given in the 112 rejection above, an alternative motivational statement is presented for the sake of compact prosecutions.
In the alternative, the examples of Hasegawa overlap each of the given value ranges, and presents the concept of a particle distribution as a percentage of D50 and D10 measurements. There are no numerical values provided for any of these measurements except the ratio which is presented to show how high or low the particle distribution is. The figures with images of the composite fibers paired with the examples providing an average fiber diameter of the finished composited fibers being in the range of 19-26 microns in the examples would lead the average artisan to find the claimed ranges of values to be obvious even if not expressed in the same manner.
Regarding claims 2 and 7, Hasegawa further teaches wherein the mineral is calcium carbonate (see calcium carbonate section) and the fiber is nanocellulose (“Further, these cellulose raw materials are further treated to carry out powdered cellulose, chemically modified cellulose such as oxidized cellulose, and cellulose nanofibers”).
Regarding claim 4, Hasegawa further teaches wherein the fiber is present in an amount of about 0.1 wt% to about 10 wt % based on the total weight of the composite fiber (“The pulp concentration is preferably 0.5% or more and less than 4.0%. If it is less than 0.5%, the frequency of collision of the raw materials with the fibers decreases, so that the reaction does not proceed easily, and if it is 4.0% or more, a uniform complex cannot be obtained due to poor stirring.”).
Regarding claims 5-6, Hasegawa teaches a range that encompasses the claimed range and preferred length of about 200 µm (see discussion above). Alternatively it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the known parameter of the encompassing range as it would have been well within the ability of the average artisan.
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.
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa et al, WO 2021/045198 (translation provided) in view of Skrzypczak et al, USP 9,371,241.
Regarding claim 8, Hasegawa teaches that he shape of the inorganic particle can be varied based on the operators decision (“By supplying such a substance to the reaction vessel, various composite particles can be synthesized, and fibrous particles and the like can be synthesized in terms of shape.” and “The average particle size, shape, etc. of the inorganic particles constituting the composite fiber of the present invention can be confirmed by observation with an electron microscope. Furthermore, by adjusting the conditions for synthesizing the inorganic particles, the inorganic particles having various sizes and shapes can be complexed with the fibers”).
There is not a direct teaching of the specific shape of a scalenohedral morphology.
To show that the scalenohedral morphology is conventional in the field of endeavor of fillers in the same industry utilizing PCC, Skrzypczak is presented.
Skrzypczak teaches that the S-PCC (column 2 lines 50-53) are a known crystalline shape utilized in the production of precipitated calcium carbonate to achieve the desired properties of the final product by controlling the shape fo the PCC (see columns 1 and 2).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the known and conventional shapes as taught by Skrzypczak in the Hasegawa reference as Hasegawa explicitly teaches any known shape can be utilized based on the desires of the operator. And the claimed shape has been shown to be conventionally used in the same field of endeavor.
Conclusion
US Patent Publication 2004/0168782 to Silenius et al is also made of note. Silenius teaches a filler for a paper web that is also made up of the a cellulose fibril of the claimed size participated with calcium carbonate in the claimed amounts (see abstract and claims).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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