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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/5/25 has been entered.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 8/1/24 is acknowledged.
Claims 11-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim.
Priority
The claims have an effective date of the filing of the provisional application: 10/16/20
Response to Arguments
Applicant argues Fricker and Michnacs do not meet the requirements of the amended claims.
The Examiner agrees, however, new positions are set forth over the amendments.
Terminal Disclaimer
The terminal disclaimer filed on 5/5/25 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US 12060462 has been reviewed and is accepted. The terminal disclaimer has been recorded. Previously recorded terminal disclaimers include: 17/498783, US 12036098, US 11525047, US 11649336, US 11746210
Claim Objections
Claims 1, 14, and their dependents, are objected to because of the following informalities: “ultrasonic/cavitation” should be amended to be “ultrasonic, cavitation” or something similar. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Rejection over Claims 1-10 and 14-16 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 is overcome by amendment.
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:
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) 1-10, 14-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ching (Microwave assisted hydrothermal decomposition of super absorbent polymers, ACS Sustainable Chemistry Engineering vol 8, no 38, aug 2020, p 14504-14510) in view of Shukla (Ultrasonic degradation of polyacrylic acid, Journal of Applied Polymer Science, vol 112, 991-997, 2009-reference already of record).
Claim 1-2: Ching discloses (see entire document) a method to degrade SAP to PAA by hydrothermal treatment in aqueous media (title, abstract) [as claimed]. The process comprises adding the SAP and water (page 14505, right column, 1st ¶) in a high pressure autoclave reactor and the reaction is allowed to run at the desired temperature and duration, cooled, and removed from the reactor (“Autoclave Treatment of SAP” under section “Materials and methods” on page 14505). The heating is provided either by microwave or by autoclave heating (page 14506, under section “Results and Discussion”).
Ching discloses examples using 2.4 wt% and 4.8% SAP (table 1, figure 1) [reading on the claimed greater than 1 wt%].
Ching discloses a high pressure autoclave at 20 bar (see under section “Autoclave Treatment of SAP”) [20 bar = 2 MPa, reading on the claimed higher than about 1 MPa].
Ching degrades the SAP at 200oC (figure 1), failing to teach the claimed higher than about 250oC; and Ching is silent regarding a total energy value requirement. However, Ching discloses that the process parameters were determined based on preliminary runs, wherein the SAP concentration was determined based on solubility of the SAP in water, the temperature lower bound was determined based on minimum temperature to achieve hydrothermal depolymerization, and reaction time was determined to be within range to satisfy the desired energy input requirement for the process (page 14505, “Design of Experiment (DOE)”). Accordingly, one of ordinary skill in the art would have the motivation to vary the process parameters, including concentration, temperature, pressure, and energy requirement, through routine experimentation, and have thus arrived at the claimed temperature and energy requirement with reasonable expectation of success.
Regarding the amendment to claim 1, Ching does not comment on processes that can be done before or after the waste SAP is degraded to PAA.
Shukla discloses the known use of ultrasonic means to degrade polyacrylic acid (title). Combining elements known to be suitable for the same intended use is prima facie obvious. See In re Kerkhoven. Degrading by hydrothermal treatment (Ching) in addition to ultrasonic degradation (Shukla) would be prima facie obvious since both accomplish the same thing. Further if one wanted to tailor or further increase the degradation using 2 different methods is prima facie obvious. Additionally, Shukla discloses that ultrasonic degradation can give distinctive characteristics (first sentence of introduction), thus, if one desires the characteristics thereof one would be motivated to include this depolymerization process before or after depolymerizing via the methods of Ching.
Claims 3-4: Ching discloses a degree of neutralization of 75% (“Materials”) [meeting the claimed greater than about 50% and between 65-75%].
Claim 5-7: Ching is silent regarding the negative logarithm of the viscosity ratio of the feed stream (SAP) to the product stream (PAA). However, since Ching discloses the claimed SAP feed steam, thus having the same viscosity as the SAP of the present invention, and discloses the claimed PAA as the product stream and having the claimed molecular weight, it is expected that Ching’s negative logarithm of the viscosity ratio, if calculated, would the same as claimed. Since the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to applicants to show otherwise. In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).
Claim 8-9: Examples of the average MW of the PAA are given at 4858, 2102, etc. (table 1) [meeting the claimed less than 2000000 and 1000000].
Claim 10: Examples of the polydispersity are given at 2.5, 1.9, 2.0, etc. (table 1) [meeting the claimed less than bout 4].
Claim 14: See claims 1-2 above.
Claim 15: See claims 1-2 above.
Ching discloses an SAP concentration example of 4.8% (table 1), failing to teach the claimed 5%. However, it has been held that a range of “more than 5%” would overlap a disclosure of 1-5%, In re Wertheim, 541 F. d. 257, 191 USPQ (CCPA 1976), In re Woodruff, 919 F.2d 1575, 16 USPQ2d. 1934 (Fed. Cir. 1990); and where the claimed range and prior art range do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (MPEP 2144.05). Additionally, CHING discloses that the SAP concentration was determined based on solubility of the SAP in water (page 14505, “Design of Experiment (DOE)”). Accordingly, it would have been obvious to one of ordinary skill in the art to have varied the percentages of the SAP in Ching’s process through routine experimentation that would allow for its solubility in water and would allow for Ching’s stated objective of degrading of SAP into PAA in the HTT reactor.
Ching discloses a high pressure autoclave (under “Autoclave Treatment of SAP”), but fails to teach 22.064 MPa; and discloses examples of 200oC, failing to teach 374oC. However, Ching discloses that the process parameters were determined based on optimal settings (page 14505, “Design of Experiment (DOE)”). Accordingly, one of ordinary skill in the art would have the motivation to vary the process parameters, including concentration, temperature, pressure, and energy requirement, through routine experimentation, and have thus arrived at the claimed pressure and temperature. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 16: See claim 5-7 above.
Claim 17: See claims 3-4 above.
Claim(s) 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ching in view of Shukla in further view of Michnacs (US 2011/0208146).
Elements of this rejection are as previously set forth, reiterated below in italics and amended to include Shuckla (and remove Fricker) due to amendment
Ching and Shuckla include elements as set forth above. In addition to the rejection above, it is known to use supercritical conditions to decompose SAP to PAA, such as taught by Michnacs:
Michnacs discloses (see entire document) a process to decompose SAP in the presence of a supercritical fluid (fig 6) and water as a co-solvent under the supercritical conditions of the fluid ([0090], [0091], claim 26]). The SAP is up to 95% neutralized ([0111]). The pressure can range from 100 to 600 bar [i.e., 10-60 MPa, encompassing the claimed 22.064 MPa and wherein supercritical conditions for water are the claimed 374oC and 22.064 MPa], wherein Michnacs discloses that higher pressures make the process more efficient leading to shorter process times ([0073]).
It would have been obvious top one of ordinary skill in the art to have performed Ching’s process using the disclosed water at the supercritical conditions of water, since Michnacs discloses to use supercritical conditions for the disclosed benefits of making the process more efficient leading to shorter process times, wherein both Ching and Michnacs are concerned with the decomposition of SAP under elevated temperature and pressure, and have thus arrived at the claimed pressure and temperature with reasonable expectation of success.
Conclusion
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759