DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 8/29/25, claims 1 and 5 are currently pending in the application.
Claim Objection
Claim 1 is objected to because of the following:
The amended claim language is convoluted with the recitation
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The claim language may be amended for brevity and to improve clarity, by reciting -
wherein the liquid containing at least a non-hydrophilic monomer (B) and the liquid containing at least a polymerization initiator (D) are in one liquid, and the one liquid further includes N-vinyl carboxylic acid amide monomer (A) and water (C),
wherein the amount of N-vinyl carboxylic acid amide monomer (A) is 29.4 mol % or higher and 80.2 mol % lower, with respect to a total of 100 mol% of the N-vinyl carboxylic acid amide monomer (A) and the non-hydrophilic monomer (B), and …
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.
Claims 1 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (JP 09296013 A, machine translation, of record).
Sato teaches a method of manufacturing a cationic water-soluble polymer by polymerizing a monomer containing a N-vinyl carboxylic acid amide of general formula CH2=CHNHCOR (A) (wherein R represents H or methyl group, i.e., may be N-vinylformamide or N-vinylacetamide, read on (A)) in an aqueous medium, and modifying the obtained polymer. Sato further teaches copolymerization of (A) with a vinyl compound (B), such as methyl acrylate and acrylonitrile (read on (B)), in a copolymerization molar ratio of (A):(B) in the range of 95:5-10:90 (Overview, [0008]-[0011]). The reference also teaches polymerization in an aqueous medium under stirring using a radical polymerization initiator by a method in which the monomer components, individually or as a mixture, are continuously introduced into water at a predetermined ratio so that sequential polymerization occurs [0012].
Additionally, according to Example 7 of Sato, a separable flask is equipped with sodium nitrate, polyethylene glycol, water (reads on liquid) and 2,2’-amidinopropane hydrochloride (i.e., an initiator per [0013], reads on (D)), to which is added, dropwise, a mixture of N-vinylformamide, methyl acrylate, 2,2’-amidinopropane hydrochloride and water [0034].
Sato is silent on a method comprising components in claimed mole ratio in one single embodiment as in the claimed invention.
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05.
Sato teaches monomers as claimed and which may be added individually, or as a mixture, at a predetermined ratio so that sequential polymerization occurs. It would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, prepare a copolymer comprising monomers as claimed in amount within the scope of the present invention, and by adding monomers individually or in any combination in an aqueous medium, , including by the claimed method.
Based on the method of disclosed Example 7 and given that general disclosure to Sato does not limit the way the components of the polymerization medium are mixed, a skilled artisan would have found it obvious to add component(s) in an aqueous medium in a dropwise manner, monomers individually or as a combination depending on their reactivity rates, including for e.g., by adding dropwise, an aqueous composition comprising methyl acrylate or acrylonitrile, vinylformamide or N-vinylacetamide, polyethylene glycol and an initiator, to an aqueous composition comprising N-vinylformamide or N-vinylacetamide, and polymerizing the obtained mixture, absent evidence of criticality for the claimed method. As such, selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, as is the selection of any order of mixing ingredients. See MPEP 2144.04.
Response to Arguments
In view of the amendment dated 8/29/25, the rejections set forth in the office action dated 5/29/25 are withdrawn, and rewritten herein above, relying on the art of record. Applicant’s arguments dated 8/29/25 have been duly considered.
Applicant submits that the amendment limits the scope of the invention to the extent that its effect is shown in the specification, that the effects of the present invention can be realized as shown in the Examples by using the specific polymerization method, and that the effects cannot be easily invented from Sato.
In response, incorporating the discussion from paragraph 9 of the office action dated 5/29/25 and as discussed therein, the prior art to Sato teaches a method of manufacturing a water-soluble polymer by radical polymerization of a monomer containing a N-vinyl carboxylic acid amide, such as N- vinylformamide and N-vinylacetamide (read on (A)), and a comonomer, such as methyl acrylate and acrylonitrile (read on (B)), in an aqueous medium, wherein monomer components may be added individually or as a mixture, in a continuous manner. Sato further prescribes a molar ratio, (A):(B) as ranging from 95:5 to 10:90. Thus, it would have been obvious to a skilled artisan to add monomers N-vinyl carboxylic acid amide and methyl acrylate/acrylonitrile in amounts within the disclosed ratio, by adding monomers individually as any combination, absent evidence of criticality for the claimed method.
Referring to the data in the disclosure, compared to the aqueous solutions of Comparative Examples 4-13 (produced by a method wherein addition of N-vinylacetamide occurs all at once) against inventive Examples 1-10 involving dropwise addition, it is seen that inventive Examples 1-10 demonstrate superior properties when compared to Comp. Examples 4-13 (TABLES 1-2). However, the data on superior properties is also limited to aqueous solutions of copolymers of N-vinylacetamide with acrylonitrile or methyl acrylate, prepared by a method wherein to an aqueous solution of N-vinylacetamide (i.e., claimed monomer (A)) is added dropwise, an aqueous dispersion of acrylonitrile (or methyl acrylate), a polymerization initiator and N-vinylacetamide. Thus, the data on record demonstrating unexpected results is not reasonably commensurate in scope with the claim language to overcome the applied art.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached
9AM-5.30PM on weekdays (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-
7733. The fax phone number for the organization where this application or proceeding is
assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762