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amendment dated 6/8/26, claims 1, 3, 4, 6-9, 23-35 are currently present in the application, with claims 23-32 being withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Upon further consideration of claim 1, it is noted that the phrase “the amino group constituting an amide structure” lacks proper antecedent basis, because the monofunctional monomer in the preceding portion of the claim is not recited as having an amide structure. It is further noted that the monofunctional monomer in claim 33 may be selected form (meth)acrylates and (meth)acrylamides, i.e., the monofunctional monomer may or may not have an amide structure. Thus, it is unclear if Applicant intends to recite that the monofunctional monomer of claim 1 has an amino group, and when the monofunctional monomer has an amide structure, the amino group is other than the amino group constituting an amide structure.
It is further noted that the instant disclosure clarifies in the context of a monofunctional monomer that “"Amino group" may not mean an amino group to constitute an amide structure (-CO-NR₂: R represents a hydrogen atom or a substituent)” (page 10). That is, the disclosure does not definitively exclude the possibility of an amino group being an amino group constituting an amide structure. Against this backdrop, given that the polyfunctional monomer in claim 1 may be a polyfunctional methylacrylamide or polyfunctional acrylamide, i.e., having an amide structure, and claim 4 recites that the polyfunctional monomer as having an amino group, it is unclear whether the claimed amino group in claim 4 is open to being an amino group that constitutes the amide structure, or if it is necessarily an amino group which is other than the amino group constituting the amide structure.
Although Examiner is not levying new grounds of rejection in order to maintain compact prosecution, Applicant is alerted to potential violation for indefiniteness under 112(b), for future reference.
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.
Claims 1, 3, 4, 6-9, 33-35 are 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.
Amended claim 1 recites the following:
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Amended claim 1 is indefinite. Of the four alternatives for the recited forms, the scope of “film of a ground powder” lacks clarity in that it is unclear if the film comprises a ground powder or the film is formed from ground powder after processing or by depositing ground powder, i.e., as in a coating.
Furthermore, it is noted that the recitation “An amine-containing polymer material that contains a polymer of a monomer mixture” does not require an “amine-containing polymer material” to be the same as “a polymer of a monomer mixture”, and thus, encompasses two different embodiments - a first embodiment where the amine-containing polymer material, is different from a polymer of a monomer mixture, and the second embodiment where the amine-containing polymer material is the polymer of a monomer mixture. The scope of the recited forms in claim 1 lacks clarity in the first embodiment, specifically, where the polymer of a monomer mixture is in the form of a slurry of a ground powder, or in the form of a film of a ground powder. Claims 3,4, 6-9, 33-35 are subsumed by rejected base claim 1, and therefore, are included in this rejection.
Claim Rejections - 35 USC § 102 and 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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, 8, 9, 33-35 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Panarin et al. (RU 2439089 C1, machine translation).
Regarding claims 1, 33-35, Panarin teaches a polymer formed from dimethylaminoethyl methacrylate (falls within the scope of monomers taught in page 12 of the instant disclosure, i.e., an amino group-containing mono-functional monomer) and dimethacrylate ethylene glycol (a polyfunctional monomer) at 30-70 :70-30 mol% (Ab., page 3, line 103-end).
Example 1 teaches a copolymers comprising dimethylaminoethyl methacrylate (DMAEM, has methacyrloyl group) and dimethacrylate ethylene glycol (DMEG, has an alkylene chain) (50:50 mol%), and is in the form of micron-sized granules. i.e., as a powder. Likewise, Examples 2-4 teach polymers formed from a monomer mixture consisting of monomers within the scope of the claimed invention. It is noted that acryonyms “DMEH” and “LMEG” in the Examples should read as “DMEG”, consistent with the teaching in the general disclosure.
It is noted that the recitation “in the form of mechanically ground powder” includes a process limitation in a product claim. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(I).
Regarding claims 8 and 9, noting that the recitation “for gas absorption” is an intended use of the polymer material, given that the disclosed polymers meet the claimed limitations, the claimed properties must be inherent to the disclosed polymers. Where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. In re Best, 195 USPQ 430, 433 (CCPA 1977). When there is sound basis for believing that the products of the Applicant and the prior art are the same, the Applicant has the burden of showing that they are not. In re Spada, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1990).
In light of above, presently cited claims are anticipated by the reference.
Claim(s) 1, 3, 4, 7-9, 33-35 are rejected under 35 U.S.C. 103 as being unpatentable Osaka et al. (JP H06316510 A, machine translation).
Regarding claims 1, 3, 4, 33-35, Osaka teaches polymer prepared from (A) 15-85 wt% of an amine-containing (meth)acrylic monomer, e.g., N,N-dimethylaminoethyl acrylate (DMAEA), (C) 1-60 wt.% of a (meth)acryloyl group-containing monomer, e.g., (meth)acrylamide or hydroxyethyl acrylate, (D) 1-20 wt.% of a cross-linkable vinyl monomer, e.g., ethylene glycol diacrylate, methylene bis-acrylamide etc. (include an alkylene chain), and optionally, (B) 0-80 wt.% a vinyl monomer ((Ab.), [0036], [0042], [0044]-[0046], ref. claims).
Example 1 teaches polymerizing a monomer mixture comprising the disclosed monomers, filtering the obtaining slurry solution and drying under reduced pressure, and pulverizing to form a white powder, i.e., a mechanically ground powder [0069]-[0071].
Osaka is silent on an amine-containing polymer material formed form a monomer mixture as in the claimed invention in one single embodiment.
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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Given the teaching in Osaka on suitable monomers (A), (C) and (D) and amounts thereof, for polymerizing said monomers to form a pulverized white polymer powder from a slurry, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare an amine-containing polymer in the form of a slurry, or as a pulverized powder. For instance, for a polymer formed from 75 wt.% N,N-dimethylaminoethyl acrylate (DMAEA, mol. wt. =143.18), 5 wt.% acrylamide (71.08) and 20 wt.% methylene bis acrylamide (mol. wt.=154.17), the calculated mol% of methylene bis-acrylamide is 17.92 and falls within the claimed range.
Regarding claim 4, noting that the instant disclosure clarifies in the context of a monofunctional monomer that “"Amino group" may not mean an amino group to constitute an amide structure (-CO-NR₂: R represents a hydrogen atom or a substituent)” (page 10), i.e., the disclosure does not definitively exclude the possibility of an amino group being an amino group constituting an amide structure, as in the disclosed methylene bis-acrylamide.
Regarding claim 7, the disclosed optional vinyl monomer may be t-butyl acrylamide or octyl (meth)acrylate, which include hydrophobic alkyl groups, and may be present at low levels, e.g., of 0.1-1% (Ab., [0042]).
Regarding claims 8 and 9, the discussion from paragraph 9 on the intended use for gas absorption is incorporated herein by reference. In addition, for reasons stated above, one of ordinary skill in the art would have found it obvious to prepare a polymer material of instant claim 1 by combining claimed monomers in an overlapping range, and reasonably expect the same of overlapping scope to be capable of providing for the claimed property, absent evidence to the contrary.
Response to Arguments
In view of the amendment dated 6/8/26, the rejections of record are withdrawn and new grounds of rejections are presented herein above. Applicant’s arguments with respect to claim rejections and the applied art have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Examiner clarifies that the Hoshino reference relied upon in prior rejections of record was applicable because in the polymer material of claim 1 the recitation “An amine-containing polymer material that contains a polymer of a monomer mixture” does not require an “amine-containing polymer material” to be the same as “a polymer of a monomer mixture”.
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.
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 Monday-Friday, 9AM-5.30PM (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
Prosecution Insights