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 1-15 in the reply filed on 5/22/2025 is acknowledged.
Claims 16-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/22/2025.
Claim Objections
Claim 13 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 6. Claim 14 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 7. Claim 15 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 8. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 2-4 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. Claims 2-4 recite the limitation "the polymer concentration" and “The water concentration” in claim 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 6-8 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. Claims 6-8 recite the limitation "the polymer concentration" and “The water concentration” in claim 5. There is insufficient antecedent basis for this limitation in the claim.
Claims 13-15 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. Claim 13 recites the limitation "the polymer concentration" and “the water concentration”. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Chatterji et al. (2001/0018470).
Regarding claims 1-4: Chaterji et al. teach a polyacrylamide based AMPS copolymer emulsion system comprising the claimed AMPS salt by weight, the claimed polymer concentration, and the claimed water concentration [0030-0031; Examples].
Claim(s) 5-8 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Chatterji et al. (2001/0018470).
Claim 5 contains product by process limitations. Process limitations in product claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a 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, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claims 5-8: Chaterji et al. teach a polyacrylamide based AMPS copolymer emulsion system formed from a composition comprising the claimed AMPS salt by weight dissolved in 50% acrylamide solution; and an oil phase formed of a mixture of an oil emulsifier surfactant and mineral oil [Examples; 0040-0041]. Chaterji et al. teach the claimed polymer concentration, and the claimed water concentration [0030-0031; Examples].
Claim(s) 13-15 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Chatterji et al. (2001/0018470).
Claim 13 contains product by process limitations. Process limitations in product claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a 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, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claims 13-15: Chaterji et al. teach a polyacrylamide based AMPS copolymer emulsion system formed from a composition comprising the claimed AMPS salt by weight dissolved in 50% acrylamide solution; and an oil phase formed of a mixture of an oil emulsifier surfactant and mineral oil [Examples; 0040-0041]. Chaterji et al. teach the claimed polymer concentration, and the claimed water concentration [0030-0031; Examples].
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) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chatterji et al. (2001/0018470) as applied to claim 5 above.
Regarding claim 9: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to a tert-butyl hydroperoxide to the monomer solution of Chatterji et al. as a polymerization initiator [0021].
Claim(s) 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chatterji et al. (2001/0018470) as applied to claim 5 above further in view of Fan et al. (4,618,647).
Regarding claim 10: Chatterji et al. teach the emulsion system of claim 5 but fails to teach wherein the monomer solution further comprising: acrylic acid, hydrochloric acid, methacrylic acid, maleic acid, and/or itaconic acid.
However, Fan et al. teach an analogous system comprising a polyacrylamide-based AMPS (2-acryiamid-2-methylpropane sulfonic acid) copolymer emulsion system (abstract), water-in-oil emulsion polymerization of at least one ethylenically-unsaturated monomer is disclosed, specific examples of water-soluble monomers which may be interpolymerized are acrylic acid and methacrylic acid (column 3, line 59 to column 4, line 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add acrylic acid or methacrylic acid as taught by Fan et al. to the monomer solution of Chatterji et al. to optimize the polymerization between the acrylamide and AMPS copolymer during emulsion polymerization.
Regarding claim 11: Chatterji et al. fail to teach sodium hydroxide.
However, Fan et al. teach adding sodium hydroxide as a pH buffer in an analogous composition (column 5, lines 50-57).
It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention to add sodium hydroxide as taught by Fan et al. to the monomer solution of Chatterji et al. to buffer the pH of the composition.
Regarding claim 12: Chatterji et al. fail to teach sodium bisulfite.
However, Fan et al. teach adding sodium bisulfite to an analogous composition to produce a uniform water-in-oil emulsion (Examples).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add sodium bisulfite as taught by Fan et al. to the emulsion system of Chatterji et al. to optimize the polymerization of the AMPS copolymer during emulsion polymerization.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ling-Siu Choi can be reached on 571-272-1098. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763