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 .
Claims 1, 2, 12, 13, 17-23 are pending and are under examination on the merits.
Claims 1, 17, 23 are amended.
Claim 3, 7, 8, 16, 24-31 are previously canceled.
Claims 4-6, 9-11, 14, 15 are newly canceled
No claims are newly added.
Election/Restrictions
Applicant’s election of Group I claims 1, 12, 13, 17-23 and elected species (ii) of the method of claim 1 in the reply filed on 9/8/25 is included herein for reference.
Claim Rejections - 35 USC § 112
The rejection in the previous action of claim 23 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of applicant’s amendment to claim 23.
Claim Objections
Claim 6 is noted as “(Canceled)” yet phrases remain in the claim; these should be deleted for consistency since other canceled claims merely state “(Canceled)”. Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The rejection of claims 1, 2, 12, 13, 19-23 under 35 U.S.C. 103 as being obvious over US 20210054248 by Collias et al is repeated and maintained herein. Specifically,
The applied reference has a common assignee and inventors with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
Collias describes superabsorbent polymer recycling to pressure sensitive adhesives.
Regarding claim 1, Collias describes mixing an alkyl alcohol and a sodium polyacrylate (paragraph 17, 18; instant step (a)) in the presence of an acid (paragraph 17, instant step (b)) and a protic solvent, water (paragraph 20) and heating (paragraph 21) to arrive at a pressure sensitive adhesive from sodium polyacrylate (paragraph 17). See also paragraph 142, 146 for the steps.
It would be obvious to one of ordinary skill to arrive at the instant (ii) steps because Collias describes these as an embodiment.
Should the steps describe in Collias- e.g. those of paragraph 146- deviate slightly in order from those claimed, selection of any order of mixing ingredients is prima facie obvious, and it would be obvious to one of ordinary skill to rearrange the steps of Collias to fit the claimed steps. Ex parte Rubin , 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Regarding claim 2, Collias describes treating a sodium polyacrylate crosslinked via a poly(ethylene glycol) diacrylate (paragraph 119) in an embodiment.
Regarding claims 12 and 13, Collias describes treating sodium polyacrylate from a disposable product selected from a baby diaper, an adult incontinence product, and a feminine hygiene product (claims 2, 3; paragraph 23, 117).
Regarding claim 19, Collias describes water (paragraph 20).
Regarding claim 20, Collias meets this claim by describing water (paragraph 20), as in claim 19, where the hydrophilic alcohol is not chosen.
Regarding claim 21, Collias describes for example 2-ethylhexanol (paragraph 18).
Regarding claim 22, Collias describes cooling (paragraph 146).
Regarding claim 23, Collias describes isolating the pressure sensitive adhesive by precipitating into an alcohol, removing the supernatant (byproduct), and purified by dissolving in THF (paragraph 144-147). Collias describes centrifugation as an alternative to the exemplified filtration (paragraph 8). Collias describes drying under vacuum after purification and precipitation with methanol (e.g. paragraph 146). It is obvious to one of ordinary skill to isolate the pressure sensitive adhesive of (ii) even though Collias exemplifies these steps for pressure sensitive adhesive acquired via a slightly different synthetic route because purification benefits the polymer containing the pressure sensitive adhesive in both cases.
Allowable Subject Matter
Claims 17, 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 17 and 18 describe bubbling the reaction mixtures with inert gas, which is not disclosed by Collias. Related processes involving sodium polyacrylate are not frequently reported in the literature and there is insufficient motivation found to bubble inert gas through Collias’s reaction mixtures.
On the whole, treatment of sodium polyacrylate for recycling purposes is rare. One further piece of inapplicable prior art to add to applicant’s already extensive documents submitted via IDS is JP H069721 by Hayashi et al. Hayashi describes degrading polyacrylic acid and its metal salts to lower molecular weight species, albeit in a different manner than that claimed (see translation Abstract).
Furthermore, instant inventors have published, alongside others, “Giving superabsorbent polymers a second life as pressure-sensitive adhesives” in Nature Communications on July 26, 2021. This date renders the art inapplicable in rejection.
Response to Arguments
Applicant’s argument p.6 paragraph 2 of Remarks submitted 5/11/26 has been considered but is not persuasive. Applicant states that Collias merely teaches that the presence of water resulting as the byproduct is not detrimental to the process, not that water is added as a solvent. This is not found convincing because in addition to teaching the byproduct water is not detrimental, Collias also teaches the presence of other, additional water, and this is the water he is referencing in paragraph 20 alongside alcohol. See, as cited above, paragraph 20, but also paragraph 146 “Effect of adding water on conversion” which adds water alongside 2ethylhexanol and arrives at polyacrylic acid conversion to poly(2-ethylhexyl acrylate). This achieves Collias’s “esterifying of the one or more protonated polyacrylic acid-based superabsorbent polymers” (paragraph 10)- water is not a byproduct, it is added to the reactants.
As such, as stated above, it is obvious to one of ordinary skill to include water and obviate the claimed method since Collias describes water.
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 CHRISTINA W ROSEBACH whose telephone number is (571)270-7154. The examiner can normally be reached 8am-3:30pm.
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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766
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