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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 10/31/2025.
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 new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 10/31/2025. In particular, claims19 and 20 are new. Thus, the following action is properly made final.
Claim Objections
Applicant is advised that should claim 1 be found allowable, claim 11 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. 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 § 102
Claims 1-4, 6, 7, 11-18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tam (Tam, et al., Journal of Polymer Science: Part B: Polymer Physics Vol. 35, 2275-2990 (1998)).
With respect to claims 1, 3, 11, and 14-17, Tam discloses an associative polymer for use in water-based applications (page 2275, first column) having structure
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(page 2277), wherein R is C32C65 and P of 2.5, 10, or 40 ethylene oxide units (page 2279, Table 1). This formula falls within the scope of claimed monomers (a1) methacrylic acid, (a2) ethyl acrylate, and (a3) having R = C32C65; m = 2.5, 10, or 49; and n = 0. The step of adding the polymer to a water-based system meets the claimed step of “combining.”
The preamble of “for improving resistance to temperature variations in an aqueous composition” is not a claim limitation. Case law holds that “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation.” See Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
With respect to claims 2 and 13, Tam teaches that applications utilizing the associative thickener includes coatings, paints, adhesives, and personal care articles (page 2276, second column).
With respect to claims 4 and 18, Tam discloses that the polymer is derived from 56 mol % methacrylic acid (claimed (a1)), 42 mol % ethyl acrylate (claimed (a2)), and 2 mol % associative monomer (claimed (a3)) (page 2277, second column). For polymer HASE 5134 in Table 1 having 10 ethylene oxide groups, the amount in mol % is converted to wt % based on molecular weights of 48 wt % of methacrylic acid, 42 wt % of ethyl acrylate, and 10 wt % of associative monomer. For polymer HASE 5142 in Table 1 having 40 ethylene oxide groups, the amount in mol % is converted to 43 wt % methacrylic acid, 37 wt % ethyl acrylate, and 20 wt % associative monomer.
With respect to claim 6, Tam shows in Figure 5 the effects of pH which neutralizes carboxyl groups when pH is increased.
With respect to claim 7, Tam shows in Figure 5 amounts of polymer of 0.1-5 wt %.
With respect to claim 12, the “varnish composition” is intended use. Because Tam discloses the use of the polymer in coatings, it is capable of being used in a varnish.
With respect to claim 20, Tam shows a plurality of pH value for the associative polymer (i.e., claimed (P)) (Figure 4), including those would partially coacervate the associative polymer.
Claim Rejections - 35 USC § 103
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Tam (Tam, et al., Journal of Polymer Science: Part B: Polymer Physics Vol. 35, 2275-2990 (1998)).
The discussion with respect to Tam in paragraph 6 above is incorporated here by reference.
With respect to claims 8 and 9, Tam discloses viscosity on a shear gradient based on pH (see Figure 4 on page 2280) but fails to disclose the relationship between temperature and shear gradient viscosity.
However, Tam teaches that viscosity is not significantly affected when the concentration is low, e.g., 0.1 wt % (see Figure 6 on page 2282).
Therefore, it would have been obvious to one of ordinary skill in the art to prepare an aqueous composition which has a viscosity that does not significantly decrease as the temperature is increased from 5 to 50°C.
With respect to claim 10, Tam shows in Figure 5 amounts of polymer of 0.1-5 wt %.
With respect to claim 19, Tam does not disclose that R2 that is C32H65 is branched. Even so, case law holds that compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
Given that C32H65 represents both a straight and a branched C-32-alkyl group, it would have been obvious to one of ordinary skill in the art to utilize a branched C-32-alkyl group.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Tam (Tam, et al., Journal of Polymer Science: Part B: Polymer Physics Vol. 35, 2275-2990 (1998)) in view of Maxim (US 6,762,269).
The discussion with respect to Tam in paragraph 6 above is incorporated here by reference.
Tam fails to disclose monomer other than those in in the structure on page 2277.
Maxim discloses a viscosity stable thickener prepared from acid monomer, nonionic acrylate monomer, and a surfactant monomer of formula M(EO)x(BO)-zOR1 where M is residues from ethylenically unsaturation and R1 is a hydrocarbon having 1-30 carbon atoms (abstract; col. 3, lines 28-40; col. 11, lines 3-54) and teaches that crosslinking monomers can be added (col. 5, lines 25-34). Other suitable nonionic acrylate monomers include hydroxyalkyl esters of (meth)acrylic acid (col. 5, lines 4-18).
Given that both Tam and Maxim are drawn to associative thickeners comprising similar surfactant monomers and further given that Maxim teaches that suitable monomers include claimed (a4) as additional nonionic monomer and (a6) as crosslinking agent, it would have been obvious to one of ordinary skill in the art to utilize those monomers in Tam’s polymer in up to an amount that does not disrupt the advantages taught by Tam.
Double Patenting
Claims 1, 3, and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17/626,931 (published as US PGPub 2022/0259346).
The rejection is adequately set forth in paragraph 8 of Office action mailed on 6/3/2025 and is incorporated here by reference.
Claims 1, 3, and 4 is/are rejected under 35 U.S.C. 103 as being obvious over US 2022/0259346.
The rejection is adequately set forth in paragraph 7 of Office action mailed on 6/3/2025 and is incorporated here by reference.
Response to Arguments
Applicant's arguments filed 10/31/2025 have been fully considered but they are not persuasive. Specifically, applicant argues that Tam fails to disclose or suggest a property linked to a temperature increase that influences viscosity stability of the aqueous composition.
The preamble of “for improving resistance to temperature variations in an aqueous composition” is not a claim limitation. Case law holds that “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation.” See Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
Also, Tam teaches that viscosity is not significantly affected when the concentration is low, e.g., 0.1 wt % (see Figure 6 on page 2282). Therefore, it would have been obvious to one of ordinary skill in the art to prepare an aqueous composition which has a viscosity that does not significantly decrease as the temperature is increased from 5 to 50°C.
Applicant argues that the data of the specification as originally filed establishes unexpected results regarding viscosity loss over various temperature ranges and shear rates.
The data has been fully considered, however, it is not a persuasive showing of unexpected results for three reasons. First, evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based. In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973). Second, the data is not a direct comparison to Tam because the comparative copolymer has R2 is C22-alkyl. Case law holds that comparative showings must compare the claimed subject matter with the closest prior art to be effective. See In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 71 (CCPA 1979). Specifically, Tam exemplifies a polymer that has R2 is C32-alkyl. Third, the data is not reasonably commensurate in scope with the scope of the claims because criticality is only shown for R2 that is branched C32-alkyl. Case law holds that evidence is insufficient to rebut a prima facie case if not commensurate in scope with the claimed invention. In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983).
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.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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