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amendment dated 1/13/26, claims 1, 3, 4, 6-9, 23-35 are currently pending in the application, with claims 23-32 being withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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, 3, 4, 6-9, 33-35 are rejected under 35 U.S.C. 103 as being unpatentable over Hoshino et al. (US 2017/0259245 A1, of record).
Regarding claims 1, 3, 4, 35, Hoshino teaches an amino group-having polymer compound gel particle film (i.e., an amine-containing polymer material) containing as a stabilizer, a polymer formed from a monomer mixture of (1) substituted aminoalkylacrylamides, such as N,N-dimethylaminopropyl methacrylamide (i.e., a monofunctional monomer having an amino group other than an amino group constituting an amide group), or from substituted aminoalkylacrylates, such as N,N-dimethylaminopropyl acrylate, and (2) a crosslinking agent having two polymerizable groups, such as an N,N’-alkylene-bisacrylamide or those wherein the alkylene group is replaced by oligoethylene-imine or oligoethylene glycol (i.e., a polyfunctional monomer having an amino group), in a molar ratio of (60 to 99)/(40 to 1) (Ab., [0075]-[0076], [0092], [0111]-0116]).
Hoshino is silent on a polymer material formed from a monomer mixture having claimed mol% of polyfunctional monomer 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 Hoshino on a polymer of a substituted aminoalkylacrylamide monomer and a crosslinking agent having two polymerizable groups, in a molar ratio of (60 to 99)/(40 to 1) respectively, 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 any polymer within the scope of Hoshino, including those within the scope of the claimed invention.
Regarding claim 6, Hoshino teaches that the amino-group having polymer particles may include a surfactant as a particle size controller [0075].
Regarding claim 7, Hoshino teaches that monomers may be used singly or as a combination, and teaches a genus of monomers, including tert-butylacrylamide (TBAM) (i.e., a hydrophobic monomer) and N,N-dimethylaminopropyl methacrylamide (DMAPM), i.e., equivalence thereof [0115]. Thus, it would have been obvious to a skilled artisan to prepare a polymer, for e.g., from a monomer mixture consisting of tert-butylacrylamide, N,N-dimethylaminopropyl methacrylamide and N,N’-methylenebisacrylamide based on their art recognized equivalence, including those within the scope of the claimed invention. MPEP 2144.06.
Regarding claim 8, Hoshino teaches gel particle film of amino-group having polymer compound particles having a large gas absorption capacity (Ab., [0103]).
Regarding claim 9, given that Hoshino’s gel-particle film containing a stabilizer polymer of overlapping scope would meet compositional limitations of claim 1, a skilled artisan would reasonably expect polymers of overlapping scope to be capable of providing for the claimed property, absent evidence to the contrary. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Regarding claims 33 and 34, Hoshino teaches 3-aminopropylacrylamide hydrochloride (reads on N-(aminoalkyl)acrylamides) and 3-aminopropylacrylate hydrochloride (read on aminoalkylacrylates). It is noted that according to the instant disclosure (PGPUB-[0127]), such monomers may also be as salts, such as a hydrochloride.
Response to Arguments
In view of the amendment dated 1/13/26, all rejections of record have been withdrawn, and new grounds of rejections are set forth herein above, relying on only Hoshino et al. of record. Applicant’s arguments (dated 12/17/25 and 1/13/26) have been duly considered.
Applicant asserts that, at best, Hoshino only discloses polymers containing a polyfunctional monomer in an amount of much less than 10 mol%, i.e. only 2 mol% (Synthesis Examples 1 to 4), the instant specification already includes comparative test data showing remarkable effects of the claimed invention compared to Hoshino, and that the relationship between the content of the polyfunctional monomer and reversible CO₂ capture stoichiometry would not have been clear to a person of ordinary skill in the art reading Hoshino. In view of the Tables 1 and 2 in the disclosure as showing that the reversible CO₂ absorption amounts of inventive Samples 1 and 2 produced from 20 mol% of polyfunctional monomer were much higher than those of Comparative Samples 1 and 2 produced from 10 mol% of polyfunctional monomer, applicant indicates that this is a significant and unexpected result and can save energy.
Referring to the Yue reference (of record) as showing that gel polymers produced from a polyfunctional monomer content at 2 to 5 mol% as showing excellent gas capture stoichiometry while a polymer with 10 mol% polyfunctional monomer has too [sic] week basicity to capture CO2 efficiently, applicant asserts that one of ordinary skill in the art would have readily understood that, of the "1 to 40 mol%" Hoshino mentioned, content over 10 mol% would not have exhibited practical CO₂ capture stoichiometry.
Acknowledging Examiner’s comments that the data on record is not reasonably commensurate in scope with claim to overcome the applied art, Applicant indicates that claim 1 has been amended to recite specific polyfunctional to make it reasonably commensurate in scope with claim and should be fully considered.
In response, Applicant’s arguments on improvements in energy with Inv. Samples 1 and 2 over Comp. Examples 1 and 2 in Table 2 of the disclosure are deemed persuasive. Moreover, even if Yue’s teachings on 2 to 5 mol% polyfunctional monomer unit as being advantageous from the gas absorption capacity standpoint were to be considered, such advantages would be applicable to polymers taught therein, i.e., comprising specific units of NIPAm, DMAPM, BIS, and optionally, TBAM (Table 1). In light of the data in the disclosure, the advantages of the inventive examples 1 and 2 would be limited to polymers having units of a specific monofunctional monomer species in specific amounts, with 20 mol% polyfunctional monomer. However, amended claim 1 is of much broader scope, being to any monofunctional monomer type and to its amount and to a broad range of the polyfunctional monomer amount. Thus, Examiner maintains that the data on record is not reasonably commensurate in scope with the claim language to overcome the Hishino reference.
Conclusion
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