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 claims 1–11 in the reply filed on 24 February 2026 is acknowledged.
Claims 12–20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 24 February 2026.
Drawings
The drawings filed 06 November 2024 are accepted.
Claim Interpretation
Claim 6 recites the limitation “the molar ratio”. Although there isn’t explicit antecedent basis for this term, it does not lead to indefiniteness because any two components implicitly exist in a molar ratio. Therefore, a person having ordinary skill in the art would understand this limitation.
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 2 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.
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 2 recites the broad recitation “from about 40 wt.% to about 75 wt.%”, and the claim also recites “from about 50 wt.% to about 65 wt.%”, which is the narrower statement of the range/limitation. The claim(s) are 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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
Claims 1–3, 5 and 7–11 are rejected under 35 U.S.C. 103 as being unpatentable over Cowman et al. (CA 2060105 A1, hereinafter “Cowman”), and Golley et al. (US 6,537,363 B1, hereinafter “Golley”).
Evidentiary support for the gel phase of microcrystalline cellulose is provided by IFF (Avicel® PH-105 Microcrystalline Cellulose Product Overview, hereinafter “IFF”) and is applied to claim 1 and all claims dependent thereon.
Regarding claim 1, Cowman teaches a slurry composition (see pg. 7, lines 1–2 teaching “an aqueous dispersion”, which is synonymous with a slurry) comprising:
a pigment (see pg. 6, final paragraph);
a microcrystalline cellulose gel (see pg. 6, paragraph 5 teaching a microcrystalline cellulose [MCC] carrier; see pg. 11, Example 1 teaching the MCC as Avicel® PH-105; IFF [“Ingredient Declaration/Labeling” section] indicates that this product is classified as a cellulose gel); and
water (see pg. 11, Example 1 teaching the addition of water).
Cowman fails to explicitly teach the limitation wherein the pigment has a BET surface area of greater than 15 m2/g and an aspect ratio greater than 30. Golley teaches a kaolin-based pigment for coating paper (see generally abstract; this is the same field of endeavor as Cowman [see pg. 1, paragraph 1]; Cowman also teaches the use of kaolin pigment [see pg. 7, first paragraph]). Golley teaches a number of kaolin-based pigments with BET surface areas greater than 15 m2/g and aspect ratios greater than 30 (see col. 14, Table 3, wherein Samples B–E have BET surface areas ranging from 15.9–16.7 m2/g and “shape factors” ranging from 44.1–60.8; also see col. 2, ll. 58–65 defining “shape factor” as an average aspect ratio value).
A person having ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that the composition taught by Cowman can be modified to use the specific parameters of kaolin pigment according to Golley. The motivation to modify most closely aligns with KSR Rationale A, which states it is prima facie obvious to combine prior art elements (Cowman’s composition and Golley’s kaolin pigment) according to known methods (Cowman already teaches a method comprising the use of kaolin pigment) to yield predictable results (since both references teach paper-coating compositions comprising kaolin, the results of modifying Cowman according to Golley are predicted to still produce a paper-coating composition). Thus, claim 1 is rendered prima facie obvious.
Regarding claim 2, Cowman, as modified by Golley, teaches the slurry composition according to claim 1. Cowman further teaches the limitation wherein the pigment comprises from about 40 wt.% to about 75 wt.% of the total weight of the slurry (see pg. 6, final paragraph teaching 100 wt. parts of pigment; see pg. 7, components a–c teaching 5–25 wt. parts binder, 0.1–10 wt. parts cobinder, and 0.1–5 wt. parts carrier, for a total of 105.2–140 wt. parts; 100 wt. parts pigment ÷ 105.2–140 wt. parts total = 71.4–95.1 wt.%, which overlaps with the claimed range; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Regarding claim 3, Cowman further teaches the limitation wherein the pigment is chosen from, inter alia, talc, kaolin, and calcium carbonate (see pg. 7, first paragraph).
Regarding claim 5, Cowman further teaches the limitation wherein the microcrystalline cellulose gel is a composite consisting of MCC and carboxymethyl cellulose (CMC) (see pg. 11, Example 1 teaching the combination of MCC and CMC).
Regarding claims 7–9, Cowman further teaches the limitations wherein the slurry comprises one or more additives, wherein the additive is selected from, inter alia, acrylates, and wherein the additives comprise from about 0.5–5 wt.% of the total weight of the slurry (see pg. 7, paragraph 2 teaching the use of hydroxypropyl acrylate as a copolymer, which is considered an additive; see pg. 7, component b teaching cobinders being added in an amount from 0.1–10 wt. parts; 0.1–10 wt. parts ÷ 105.2–140 total wt. parts = 0.077–8.7 wt.% [the minimum amount of cobinder ÷ the maximum amount of everything else, and the maximum amount of cobinder ÷ the minimum amount of everything else]; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Regarding claims 10 and 11, Cowman teaches the pigments as having a solids content of 50–70% (see pg. 8, paragraph 4), but fails to explicitly teach the limitation wherein the solids remain in suspension as determined visually after storage at 25 °C for at least 60 days. However, because Cowman, as modified by Golley, teaches all the limitations of parent claim 1, as well as the solids content required by claims 10 and 11, the prior art suspension is expected to have the same properties as the claimed suspension, including stability (i.e., resistance to settling over time). MPEP 2112.01(II) states that if the composition is physically the same, it must have the same properties. Therefore, although Cowman fails to explicitly teach the stability of the slurry over time, it is sufficiently similar to the claimed slurry that it would be expected to have the same stability.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Cowman and Golley as applied to claim 3 above, and further in view of Avani (Avani Group of Industries, “Talc in Paper”, 19 February 2019, <avanitalc.com>, hereinafter “Avani”).
Regarding claim 4, Cowman, as modified by Golley, teaches the slurry composition according to claim 3. Cowman teaches the use of talc, but fails to specify whether it is lamellar talc or some other form. While lamellar talc is the most common crystalline form of talc, other forms exist, such as rock-forming soapstone, fibrous talc, and synthetic amorphous talc. Avani teaches the use of talc in paper manufacturing, and explicitly teaches lamellar talc as spreading evenly across the surface of paper, reducing spots, defects and holes (see third bullet point). Thus, although Cowman fails to explicitly teach lamellar talc, a person having ordinary skill in the art before the effective filing date of the claimed invention would be sufficiently motivated to utilize lamellar talc as taught by Avani. The motivation to modify Cowman according to Avani most closely aligns with KSR Rationale F, which states that known work in one field of endeavor (Avani’s teaching of lamellar talc in paper manufacture) may prompt variations of it for use in the same field (Cowman’s use of talc in paper coatings) based on design incentives (Avani’s teaching of even spreadability and reduced defects in the final paper product), if the variations are predictable to one of ordinary skill in the art (Cowman already teaches the use of talc, so replacing it with the lamellar talc taught by Avani is predicted to still achieve the same results as Cowman already achieves). Thus, claim 4 is rendered prima facie obvious.
Allowable Subject Matter
Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 6 recites the limitation wherein the molar ratio of MCC to CMC is from about 1:1 to about 1:4. Cowman teaches the use of MCC and CMC, but not in this ratio (see pg. 11, Example 1, wherein 20 g of MCC is mixed with 0.8 g CMC [MCC and CMC are polymers, so their exact molar mass cannot be determined without knowing the degree of polymerization, and thus the molar ratio cannot be calculated; MCC has a molar mass of about 162 g/mol multiplied by its degree of polymerization, and CMC has a molar mass ranging from 185–263 g/mol multiplied by its degree of polymerization, with the range determined by the degree of carboxymethyl substitution; assuming the polymers have similar degrees of polymerization, there is considerably more MCC than CMC in Cowman’s composition]).
Additional searches of prior art revealed several other compositions using a mixture of MCC and CMC, but in each of these, the amount of MCC was considerably higher than the amount of CMC. There is no prior art of record that can anticipate or render obvious a molar ratio of MCC:CMC ranging from 1:1 to 1:4, and a person having ordinary skill in the art would not have had reason to use an equal or higher molar amount of CMC relative to MCC because this goes against what is conventional in the art. Accordingly, this limitation is determined to be allowable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ryan P Loughran whose telephone number is (571)272-2173. The examiner can normally be reached M, Tu, W, F after 5:30 PM and Th from 8 AM to 6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber 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.
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/R.P.L./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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