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 .
Election/Restrictions
Applicant’s election without traverse of Group I claims 1, 2, 4-6, 9-13, 17-23 in the reply filed on 9/8/25 is acknowledged.
Applicant further elected species (ii) of the method of claim 1.
Claims 14, 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/8/25.
Claims 4-6, 9-11 are also withdrawn as they describe steps in the non-elected species.
Claims 1, 2, 12, 13, 17-23 are examined below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 23 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claim set currently under examination was submitted 8/18/22, after the filing date. Claim 23 recites “comprising one or more of” which is a broader statement than the previous claim set. The previous claim set listed the steps in a necessary order via claims 24-26, not “one or more of”. The broadening of this scope entails new matter.
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.
Claim 23 is 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.
Claim 23 describes “one or more of” four steps, yet choosing just one of some of the options is nonsensical. For example, choosing only “centrifugation of the precipitate” yields an antecedent basis issue because there is no precipitate required to be present. It is possible that applicant merely chose poor wording and claims 23-26 should remain as they were in the claim set of 4/13/22, which is not examined currently.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 12, 13, 19-23 is/are rejected under 35 U.S.C. 103 as being obvious over US 20210054248 by Collias et al.
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). 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.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 5712721302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTINA H.W. ROSEBACH/ Examiner, Art Unit 1766