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 Office action is in response to the amendment filed 5/13/2026. Claims 1-17, and 25-27 are cancelled; claims 18 and 21 are amended. Accordingly, claims 17-24 and 28-32 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
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 18-24 and 28-31 are rejected under 35 U.S.C. 103 as being unpatentable over Mertens et al (US 2004/0260017 A1) in view of Harrington et al (US 2005/0143506 A1), Klima et al (US 6,117,934), and Dugonjic-Bilic et al (WO 2016/102126 A1).
It is noted that WO 2016/102126 (WO) is being utilized for date purposes. However, US equivalent for WO, namely, Dugonjic-Bilic et al (US 2018/0327655 A1) is referred to in the body of the rejection below. All column and line citations are to the US equivalent.
Regarding claims 18 and 23, Mertens et al disclose water-in-oil dispersion (paragraph 0096). The method comprises preparing an aqueous solution of monomers including acrylic acid, acrylamide and 2-acrylamido-2-methylpropanesulfonate (i.e., reads on step (i) of preparation of aqueous monomer solution in present claim 18). The monomer solution includes sodium hydroxide (i.e., reads on adjusting pH of aqueous monomer solution and is implicit in the inclusion of sodium hydroxide). A solution of Hypermer® 1083 in Edenor® MESU and Shellsol® D40 (i.e., reads on step (ii) of preparation of an organic solution containing a water-immiscible liquid that does not interfere with polymerization reaction in present claim 18) was mixed into said mixture (i.e., reads on aqueous phase is mixed with a continuous hydrophobic organic phase and droplets of the aqueous phase are stabilized by the surfactant package in present claim 18). The mixture was homogenized to yield a finely divided emulsion (i.e., reads on step (iii) of addition of an aqueous phase of step (i) to an organic phase of step (ii) to prepare a water-in-oil emulsion comprising monomer from step (i) in present claim 18). After degassing by perfusion with nitrogen (i.e., reads on step (iv) of removal of oxygen in present claim 18), diethyl-2-2’-azoisobutyrate were added and mixture heated to 600C. Polymerization began (i.e., reads on step (iv) of polymerization reaction by addition of one or more compounds that form radicals in present claim 18) and temperature was maintained between 600C to 1000C (i.e., reads on step (v) of adjusting temperature by heating in present claim 18) and water-in-oil polymer dispersion is obtained (paragraph 0093) which reads on conversion of monomers into a polymer in present claim 18 and comprising at least one polymer in aqueous phase and the aqueous phase is mixed with a continuous hydrophobic phase and droplets of the aqueous phase are stabilized by the surfactant package in present claim 18. The polymers contained in water-in-oil polymer dispersions are water-soluble (paragraph 0036) which reads on the water-soluble polymer in present claim 18. It is possible to prepare polymer dispersions whose product viscosity after activation is in the range of 100 to 1,000 mPa.s (paragraph 0022) which reads on viscosity of emulsion in present claim 18.
Mertens et al are silent with respect to addition of surfactant package having first surfactant having a HLB value of between 3 and 9, and second surfactant with a HLB value greater than 11; species of first surfactant; second surfactant is an alkyl polyglycoside which is dodecyl polyglucoside having 1 to 3 glucoside units; molecular weight of water-soluble polymer.
However, regarding addition of surfactant package having first surfactant having a HLB value of between 3 and 9, and second surfactant with a HLB value greater than 11, Mertens et al teach, in example 1, addition of a mixture of Glucopon® 225 DK and Marlipal® 013/30 to the water-in-oil dispersion (paragraph 0096). It is noted that Glucopon® 225 DK and Marlipal® 013/30 have HLB values of 13.6 and 8.0, respectively, and Glucopon® 225 is an alkyl polyglycosides (i.e., reads on the surfactant package in present claim 18; and second surfactant is an alkyl polyglycoside in present claim 18). Case law holds that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, see also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), See MPEP § 2144.04. Therefore, in light of the teachings in Mertens et al and case law, it would have been obvious to one skilled in art prior to the filing of present application, to include the surfactant package in the polymerization process, of Mertens et al, either before as in present claims or after polymerization, absent evidence to the contrary.
Regarding species of first surfactant, Dugonjic-Bilic et al teach in example 1, preparation of polymer via inverse emulsion polymerization comprising sorbitan monooleate (paragraph 0158). It is noted that sorbitan monooleate has a HLB value of 4.3 (i.e., reads on sorbitan fatty acid ester and its HLB value in present claim 18). The polymer emulsion of example 1 is mixed with a surfactant having a HLB of 13 and the starting viscosity is 76 mPas (paragraph 0166). Therefore, in light of the teachings in Dugonjic-Bilic et al, and given that Mertens et al teaches use of a combination of two different surfactants having HLB values as presently claimed, it would have been obvious to one skilled in art prior to the filing of present application, to include sorbitan monooleate in combination with alkyl polyglucoside in the polymerization process, of Mertens et al, absent evidence to the contrary.
Regarding second surfactant is an alkyl polyglycoside which is dodecyl polyglucoside having 1 to 3 glucoside units, Klima provides evidence that Glucopon® 225 surfactant taught in Mertens et al, is an alkyl polyglycoside in which alkyl group contains 8 to 10 carbon atoms and has an average degree of polymerization of 1.7 (col. 4, lines 16-19) which reads on 1 to 3 glucoside units in present claim 18. It is noted that dodecyl polyglucoside is a homolog of alkyl polyglycoside having 10 carbon atoms (i.e., decyl polyglycoside). Case law holds that structural similarities have been found to support a prima facie case of obviousness. See, e.g., In re May, 574 F.2d 1082, 1093-95, 197 USPQ 601, 610-11 (CCPA 1978) (stereoisomers); In re Wilder, 563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent homologs and structural isomers). Therefore, in light of the teachings in Mertens et al, Klima et al and case law, it would have been obvious to one skilled in art prior to the filing of present application to use a homolog, of the alkyl polyglycoside Glucopon® 225, having 12 carbon atoms in the alkyl chain of alkyl polyglucoside (i.e., dodecyl polyglycoside) in the process, of Mertens et al, before polymerization, absent evidence to the contrary.
Regarding molecular weight of water-soluble polymer, Harrington et al in the same field of endeavor teach that inverse polymerization is utilized on a commercial scale to produce high molecular weight water-compatible polymers (paragraph 0005). The advantages of this process include the ability to prepare high molecular weight water-compatible polymer in a low viscosity, high solids form and the polymer can have high molecular weight in the tens of millions (paragraph 0006) which reads on molecular weight of water-soluble polymer in present claims 18 and 23. Therefore, in light of the teachings in Harrington et al and given that water soluble polymer of Mertens et al in view of Klima and Dugonjic-Bilic et al is prepared by substantially similar process as in present claims, one skilled in art would have a reasonable basis to expect the water-soluble polymer, of Mertens to have a high molecular weight of greater than 1,000,000 and greater than 3,000,000, absent evidence to the contrary. Additionally, case laws holds that if there is no evidence in the record pointing to any critical significance in a claimed molecular weight then the claims are not patentable over the prior art. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Should applicant argue criticality of molecular weight, it will be noted that applicant’s examples do not indicate or suggest a critical molecular weight. Such data has little to no probative value.
Regrading claims 19 and 20, Mertens et al teach that water-in-oil dispersions contain 10 to 70% by weight of water-soluble polymers, 0.5 to 10 wt% of water-in-oil emulsifier and 20 to 80 wt% of organic phase, 0.01 to 2 wt% of a residual monomer scavenger, 0.5 to 10 wt% of inverter mixture and water to make up to 100 wt% (paragraphs 0029-0030) which overlaps with the amount of water-soluble polymer in aqueous phase of present claim 19; and amount of synthetic polymer in the present claim 20.
Regarding claims 21 and 22; Mertens et al teach that polymers are produced by adding monomers to the organic phase as a monomer solution consisting of water and suitable monomers. The aqueous monomer solution contains at least one polymerizable hydrophilic monomer. Examples of hydrophilic monomers include olefinically unsaturated carboxylic acids such as acrylic acid, olefinically unsaturated sulfonic acids such as AMPS, vinyl sulfonic acid, and derivatives of acrylic acid such as (meth)acrylamide. Therefore, in light of the teachings in general disclosure of Mertens et al, it would have been obvious to one skilled in art prior to the filing of present application to include any of the hydrophilic monomers such as (meth)acrylamide (i.e., reads on structural I in present claim 21) in combination with other monomers such as AMPS, vinyl sulfonic acid, and acrylic acid in equal amounts, absent evidence to the contrary.
Regarding claim 24, Klima provides evidence that Glucopon® 225 surfactant taught in Mertens et al, is an alkyl polyglycoside in which alkyl group contains 8 to 10 carbon atoms. It is noted that Glucopon® 225 surfactant having 8 to 10 carbon atoms with a degree of polymerization of 1.7 has a molecular weight of about 443 g/mol. Hence, it is the Office’s position that alkyl polyglycoside having 12 carbon atoms in the alkyl chain (i.e., dodecyl polyglucoside) would necessarily have a molecular weight of less than 950 g/mol (i.e., reads on present claim 24), absent evidence to the contrary.
Regarding claims 28, 29 and 30, see example 1, of Mertens et al, wherein a surfactant mixture comprising Glucopon® 225 DK and Marlipal® 013/30 is added to water-in-oil dispersion in amounts of 4.4% by weight (i.e., reads on amount of first and second surfactant in present claim 28). The Glucopon® 225 DK and Marlipal® 013/30 are mixed in a ratio of 1:1 (paragraph 0096) which reads on ratio of first and second surfactant in present claims 29 and 30; and amounts of first and second surfactant in present claim 30.
Regarding claim 31, see example 3, of Mertens et al, wherein the polymer is formed from a monomer mixture comprising acrylic acid, acrylamide and sodium 2-acrylamido-2-methylpropanesulfonate (paragraph 0098) which reads on copolymer in present claim 31.
Claims 21-22 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over as being unpatentable over Harrington et al (US 2005/0143506 A1), Klima et al (US 6,117,934), Dugonjic-Bilic et al (WO 2016/102126 A1), and Engelhardt et al (US 2009/0192055 A1).
The discussion with respect to Mertens et al, Harrington et al, Klima et al, and Dugonjic-Bilic et al in paragraph 8 above is incorporated here by reference.
Mertens et al, Harrington et al, Klima et al and Dugonjic-Bilic et al fail to disclose in a single embodiment as in present claims a species of the water-soluble polymer.
However, Mertens et al in the general disclosure teach that polymers are produced using an aqueous monomer solution containing at least one polymerizable hydrophilic monomer and may include two or more monomers from the group consisting of hydrophilic monomers (paragraph 0037). Examples include acrylic acid, AMPS, acrylamide (paragraphs 0038-0041). Additionally, Engelhardt et al in the same field of endeavor teach an aqueous polymer composition comprising a water-soluble polymer (abstract). The copolymers are prepared preferably by inverse emulsion polymerization (paragraph 0029). See example 11, wherein the polymer comprises 60% by weight of acrylamide (i.e., reads on structural unit I in present claim 21 wherein R1, R2 and R3 = hydrogen, and its amount in present claims 21-22 and 32), 30% by weight of AMPS (i.e., reads on structural unit II in present claim 21 wherein R4 = H, A = two-valent organic bridging group and R5 = H; and its amount in present claims 21-22 and 32), 0.5% by weight of VPA (i.e., reads on structural unit V in present claim 21 wherein D is a covalent C-P bond, R18 and R19 = H; and its amount in present claims 21-22 and 32), and 9.5% by weight of vinyl formamide (i.e., reads on structural unit IV in present claim 21 wherein R12, R13, R14 = hydrogen and R15 = -COH; and its amount in present claims 21-22 ad 32). The ethylenically unsaturated carboxylic acid is preferably present in amounts of between 0 and 10% by weight (paragraph 0035 and 0040) and examples include acrylic acid (paragraph 0054) which reads on structural unit III in present claim 21 wherein R6, R7 and R8 = hydrogen and B is a covalent C-C bond; and overlaps with its amount in present claims 21-22 and 32. Therefore, in light of the teachings in Engelhardt et al, it would have been obvious to one skilled in art prior to the filing of present application to include any of the monomers in the polymerization process, of Mertens et al, including those in the exemplary embodiments, of Engehardt et al, in combination with acrylic acid, absent evidence to the contrary.
Response to Arguments
The rejections under 35 U.S.C. 103 as set forth in paragraphs 9-10, of Office action mailed 2/13/2016, are withdrawn in view of amendments and/or applicant arguments and/or new grounds of rejection set forth in this Office action, necessitated by amendment.
While the grounds of rejection are changed, it was still deemed appropriate to address some of the arguments which would be pertinent to new grounds of rejection in this office action (See paragraph 11 below).
Applicant's arguments filed 5/13/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that (A) Examiner maintains that emulsion and dispersion are interchangeable and cites to the language that appeared in claims of present application filed 3/1/2024. However, the language does not appear in any of the claims currently pending in the application; (B) ChatGPT states that emulsions and dispersions are closely related but not interchangeable. Dispersion polymerization typically starts as a homogeneous solution, polymer particles form during the reaction, and stabilizers prevent particles from clumping. Emulsion polymerization is a specific type of dispersion polymerization wherein water is usually the continuous phase, monomer forms droplets, surfactants create micelles, polymerization happens mainly inside micelles and produces fine latex particles. The differences between dispersion and emulsion differ in where the polymerization occurs (solution vs micelles, particle size and distribution, role of surfactants); (C) ChatGPT states US 2004/0260017 (Mertens) does not teach inverse emulsion polymerization method. It explicitly notes that Mertens describes systems where a water-immiscible continuous phase is used and hydrophilic polymers end-up in water-in-oil (inverse) emulsion product. Such systems can fall into multiple categories including inverse emulsion polymerization, inverse suspension polymerization and inverse microemulsion polymerization. The patent does not commit to a single mechanism and is describing a broad class of inverse dispersion processes and not limiting itself to inverse emulsion polymerization; and (D) examiner asserted that a showing of unexpected results is not persuasive, because the alkyl polyglucoside having 8 to 10 carbon atoms must be in comparative examples. Comparative examples 6 and 7 of present application have 10 carbon atoms, like the C10 alkyl of Data sheet of Glucopon® 225 DK
With respect to (A), Examiner reliance on claims filed 3/1/2024 to indicate that the terms “emulsion: and “dispersion” are used interchangeably in the present application, was because the final product formed when the aqueous phase is dispersed in a continuous hydrophobic organic phase (as in claims filed 3/1/2024) and the present claims wherein “dispersion is replaced by the term “mixed” is called the same (i.e., water-in-oil polymer emulsion) and term “mixed” would encompass “dispersed”.
With respect to (B), applicant attention is drawn to Mertens et al, wherein the process of polymerization includes forming an aqueous solution of monomers (i.e., a continuous phase) to which is added the organic phase comprising surfactants (i.e., Hypermer®, a surfactant) to form an emulsion. The polymer particles have a particle size of less than 1 microns (paragraph 0060). Now applicant attention is drawn to present application, wherein the size of aqueous droplet is less than 1 micron (page 10, lines 26-32). Hence, it is clear that the process in Mertens et al comprises all the elements alluded to as required components in emulsion polymerization by ChatGPT (i.e. continuous aqueous phase, surfactants and forming fine particles).
With respect to (C), it appears that ChatGPT is contradicting its own statement that Mertens does not teach inverse emulsion polymerization but also stating that process of Mertens can fall into multiple categories including inverse emulsion polymerization. Applicant attention is drawn to Mertens, wherein it states with sufficient specificity that the processes include reversed-phase emulsion polymerization (i.e., a synonym for inverse).
With respect to (D), comparative examples 6 and 7 use ethoxylates comprising 10 carbon atoms in the alkyl chain. These ethoxylates are not the same as alkyl glucoside used in Mertens et al. Hence, it is the Office’s position that comparison is not with the closest prior art.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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