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, claims 1-11 and Species group I (claim 3) in the reply filed on 07/10/2026 is acknowledged.
Claims 12-17 and Species groups II-III (claims 4 and 11) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, respectively, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/10/2026.
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.
Claim 3 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 3 recites “wherein the unsaturated fatty acid or mixture thereof comprises a tall oil fatty acid (TOFA) or a salt thereof” which is confusing given that it is not clear whether the tall oil fatty acid is in addition to the elaidic acid already recited in claim 1. It is suggested to amend claim to recite “further” comprises a tall oil fatty acid (TOFA) or a salt thereof.
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.
Claim(s) 1-2, 9-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Utsumi et al. (U.S. Patent Application Publication No. 2018/0016421).
Regarding claims 1, 2, 10, and 12, Utsumi et al. teaches a surface-treated calcium carbonate filler comprising 70-100 wt% of saturated fatty acid (70≤ SFa ≤100) in the surface treatment agent comprising a water-soluble monovalent salt of a fatty acid, and 0-30 wt% of unsaturated fatty acid (0≤ Ufa ≤30) in the surface treatment agent (See Abstract) which can be elaidic acid (paragraph [0033]), i.e. 100%. 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); see MPEP 2144.05.
Regarding claim 9, Utsumi et al. teaches wherein the saturated fatty acid can include palmitic and stearic acid (paragraph [0032]).
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Utsumi et al. (U.S. Patent Application Publication No. 2018/0016421) in view of Hayashi et al. (JP 2008222493).
Utsumi et al. is relied upon as disclosed above.
Regarding claim 3, Utsumi et al. fails to teach wherein the unsaturated fatty acid or mixture thereof comprises a tall oil fatty acid or a salt thereof.
However, Hayashi et al. teaches surface treated calcium carbonate comprising a polymerized fatty acid and another surface treating agent (See Abstract) wherein the polymerized fatty acid is a compound obtained by interpolymerizing two or more unsaturated fatty acids and dimer acid made from tall oil fatty acid or soybean oil fatty acid is produced which is preferable from the viewpoint of cost (page 4). Hayashi et al. teaches any other surface treatment agent used in combination with the polymerized fatty acid can be used including saturated fatty acid such as stearic acid and palmitic acid (page 5).
It would have been obvious to one of ordinary skill in the art to include tall oil in the surface treatment of the calcium carbonate of Utsumi et al. in order to improve cost.
Claim(s) 1-2, 8-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kayano et al. (US 7,186,763).
Regarding claims 1, 2, 7, 8, 10, and 12, Kayano et al. teaches a surface-treated calcium carbonate particle comprising unsaturated fatty acid and unsaturated fatty acid blended in a ratio of 0.3-5 (col. 5, line 5-10) which necessarily overlaps the claimed amounts of saturated fatty acid and unsaturated fatty acid and wherein the unsaturated fatty acid can include elaidic acid (col. 3, line 42), i.e. 100%. 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); see MPEP 2144.05.
Regarding claim 9, Kayano et al. teaches wherein the saturated fatty acid can include palmitic and stearic acid (col. 4, lines 5-8).
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kayano et al. (US 7,186,763) in view of Hayashi et al. (JP 2008222493).
Kayano et al. is relied upon as disclosed above.
Regarding claim 3, Kayano et al. fails to teach wherein the unsaturated fatty acid or mixture thereof comprises a tall oil fatty acid or a salt thereof.
However, Hayashi et al. teaches surface treated calcium carbonate comprising a polymerized fatty acid and another surface treating agent (See Abstract) wherein the polymerized fatty acid is a compound obtained by interpolymerizing two or more unsaturated fatty acids and dimer acid made from tall oil fatty acid or soybean oil fatty acid is produced which is preferable from the viewpoint of cost (page 4). Hayashi et al. teaches any other surface treatment agent used in combination with the polymerized fatty acid can be used including saturated fatty acid such as stearic acid and palmitic acid (page 5).
It would have been obvious to one of ordinary skill in the art to include tall oil in the surface treatment of the calcium carbonate of Kayano et al. in order to improve cost.
Claim(s) 1, 2, 5-6, 9, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Nover et al. (CN 1910226).
Regarding claims 1, 2 and 12, Nover et al. teaches a surface-treated calcium carbonate particle (See Abstract), wherein a first coating agent comprises saturated and unsaturated fatty acid, or a mixture thereof, including palmitic acid, stearic acid, and elaidic acid (page 4). Nover et al. discloses a mixture composed of 30-40wt % stearic acid, about 40-50wt % palmitic acid, and about 13-19wt % oleic acid (page 4).
While Nover et al. does not explicitly disclose this mixture comprising elaidic acid, Nover et al. discloses oleic acid and elaidic acid (page 4) as being equivalent and therefore interchangeable. Therefore, it would have been obvious to one of ordinary skill in the art to use elaidic acid in place of oleic acid and thereby arrive at the claimed invention.
Given that Nover et al. teaches amount of “about” 19 wt% wherein “about” includes values slightly above those disclosed, it is clear that the disclosure of “about” 19% by Nover et al. would meet the amount of unsaturated fatty acid claimed. Therefore, it would have been obvious to one of ordinary skill in the art to use unsaturated fatty acid with amount, including that claimed, in Lockridge and thereby arrive at the claimed invention.
Alternatively, it is apparent, however, that the instantly claimed amount and that taught by Nover et al. are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount disclosed by Nover et al. and that disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the amount disclosed in the present claims is but an obvious variant of that disclosed in Nover et al., and thereby one of ordinary skill in the art would have arrived at the claimed invention.
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); see MPEP 2144.05.
Regarding claims 5 and 6, Nover et al. teaches wherein the diameter is typically less than or equal to 1 μm (page 3).
Regarding claim 9, Nover et al. teaches wherein the saturated fatty acid can include palmitic and stearic acid (page 4).
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Nover et al. (CN 1910226) in view of Hayashi et al. (JP 2008222493).
Nover et al. is relied upon as disclosed above.
Regarding claim 3, Nover et al. fails to teach wherein the unsaturated fatty acid or mixture thereof comprises a tall oil fatty acid or a salt thereof.
However, Hayashi et al. teaches surface treated calcium carbonate comprising a polymerized fatty acid and another surface treating agent (See Abstract) wherein the polymerized fatty acid is a compound obtained by interpolymerizing two or more unsaturated fatty acids and dimer acid made from tall oil fatty acid or soybean oil fatty acid is produced which is preferable from the viewpoint of cost (page 4). Hayashi et al. teaches any other surface treatment agent used in combination with the polymerized fatty acid can be used including saturated fatty acid such as stearic acid and palmitic acid (page 5).
It would have been obvious to one of ordinary skill in the art to include tall oil in the surface treatment of the calcium carbonate of Nover et al. in order to improve cost.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787
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