NON-FINAL REJECTION AFTER FILING RCE
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 .
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.
Claim(s) 1-3, 7-8, 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Savich U.S. Patent Application Publication No.: 2007/0163173 A1.
Savich discloses a superabsorbent copolymer for root dip applications. Savich’s method for preparing a superabsorbent polymer product for agricultural applications, comprises: graft polymerizing using at least one monomer (e.g. acrylic acid, acrylamide etc.) onto a polysaccharide (e.g. starch) in the presence of at least one initiator (e.g. ammonium persulfate, L-ascorbic acid etc.) to form a polysaccharide graft copolymer; adding a cross-linking agent (e.g. methylene bis-acrylamide) to form a cross-linked polysaccharide graft copolymer; adjusting a pH (e.g. using potassium hydroxide) of the cross-linked polysaccharide graft copolymer to within a pH range of about 6.0 and about 8.0; and isolating the superabsorbent polymer product through drying or extruding the cross-linked polysaccharide graft copolymer, see abstract, paragraphs [0009]-[0015], [0022]-[0023]. Please note that Savich’s Examples 1-2 and claim 19, directly teach the use of a starch-g-poly (2-propenamide-co-2-propenoic acid), which reads directly on applicant’s graft copolymer species of dependent claim 12, and its production process would easily fall within the molar ratio range of applicant’s dependent claim 8.
Savich has been described above and differs from applicant’s claimed invention in that there is not a direct teaching (i.e. by way of a specific example) to where the catalytic system employes an ascorbic acid polymerization initiator in combination with an ammonium persulfate polymerization initiator, as set forth in applicant’s independent claim 1. Furthermore, Savich does not expressively state the water absorbance capacity range of the formed superabsorbent copolymer.
It would have been obvious to one having ordinary skill in the art to use Savich’s disclosure of paragraph [0013], wherein it is directly disclosed that L-ascorbic acid is an effective polymerization initiator for the invention, and which can optionally be used in combination with other types of polymerization initiator (e.g. ammonium persulfate), as strong motivate to actually employ a mixture of L-ascorbic acid and ammonium persulfate in the graft polymerizing method. It is well known in the art that it is not inventive to use two or more materials in combination for the same purpose they are individually known to be useful without a showing of unexpected and superior results.
Furthermore, please note that Savich’s disclosed method for preparing a superabsorbent polymer has no specific disclosure to where the graft polymerization method requires any heating step, as such there is no expectation that any heating step was used. Also note that in paragraph [0027] of applicant’s specification, applicant defines “room temperature” as from 15oC - 45oC, but said temperature my vary by + 5oC to -5oC. In any case, it is well within the skill of the ordinary artisan in the art to determine what temperature would be most ideal to run the graft polymerization reaction at, given the specifics of the reaction mixture component themselves, the desired speed for the reaction, and the desired input energy cost.
Finally, While Savich does not expressively disclose the water absorbance capacity range of the formed superabsorbent copolymer, Savich does teach in his Examples 1-2 and claim 19, the use of synthesized starch-g-poly (2-propenamide-co-2-propenoic acid), which reads directly on Applicant’s graft copolymer species of starch-g-poly (2-propenamide-co-2-propenoic acid) as claimed in dependent claim 12. It is notoriously well known in the art that a compound is inseparable from its properties. As such, Savich’s synthesized starch-g-poly (2-propenamide-co-2-propenoic acid) would inherently have a water absorbance capacity in the range of 500 g/g to 980 g/g as set forth in Applicant’s independent claim 1.
Claim(s) 1-3, 7-8, 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Chambers U.S. Patent Application Publication No.: 2013/0303714 A1 in view of Savich U.S. Patent Application Publication No.: 2007/0163173 A1.
Chambers disclose biodegradable graft copolymers derived from a carbohydrate and at least one alpha, beta.-unsaturated carboxylic acid derivative having superabsorbent properties are disclosed in addition to the substantially adiabatic polymerization process by which the graft copolymers are made. The methods disclosed can be carried out in a variety of currently available continuous commercial reactors. Polymerizations carried out with starch have surprisingly produced substantially quantitative yields of graft copolymer free of residual monomer produced as a moist copolymer. Product work-up typically involves an optional neutralization and drying, see abstract.
Applicant’s attention is drawn to the graft polymerization method as set forth in Chambers’ examples, such as Examples 3-5, 7-8 and 26. All said examples disclose a graft polymerization of a mixtures that comprises in part: water, starch (carbohydrate), acrylic acid (primary monomer), acrylamide (secondary monomer), glycidyl methacrylate (cross-linker), ammonium persulfate (catalyst/initiator). Said graft polymerization reactions are followed by neutralizing the produced superabsorbent copolymers with potassium hydroxide.
Please note that the listed concentration amounts for the starch and the acrylic acid monomer, result in molar ratios that fall well within Applicant’s claim molar ratio range of dependent claim 8.
Please note that Chambers’ graft polymerization reaction temperature of Example 26 was from about 68oF to about 86oF, which falls well within applicant’s “room temperature” of independent claim 1. Also note that in paragraph [0027] of applicant’s specification, applicant defines “room temperature” as from 15oC - 45oC, but said temperature my vary by + 5oC to -5oC.
Chambers differs from applicant’s claimed invention in the following ways: 1) there is not a direct disclosure to where the catalytic system employes an ascorbic acid polymerization initiator in combination with an ammonium persulfate polymerization initiator, as set forth in applicant’s independent claim 1, and 2) there is not a direct teaching (i.e. by way of a specific example) to where the polymerization in step a) is carried out in the absence of an acrylamide monomer, as set forth in applicant’s independent claim 1. Furthermore, Chambers does not expressively state the water absorbance capacity range of the formed superabsorbent copolymer.
The secondary reference to Savich has been described above.
It would have been obvious to one having ordinary skill in the art to use Savich’s disclosure of paragraph [0013], wherein it is directly disclosed that L-ascorbic acid is an effective polymerization initiator for the invention, and which can optionally be used in combination with other types of polymerization initiator (e.g. ammonium persulfate), as strong motivate to actually employ a mixture of L-ascorbic acid and ammonium persulfate in the identical graft polymerizing method used by Chambers. It is well known in the art that it is not inventive to use two or more materials in combination for the same purpose they are individually known to be useful without a showing of unexpected and superior results.
It would also have been obvious to one having ordinary skill in the art to use Chambers’ disclosure of paragraph [0037], wherein it is disclosed that the graft polymerization method can be conducted where only one type of monomer is used (acrylic acid is specifically illustrated as the one monomer), as strong motivation to only employ one monomer species (e.g. acrylic acid) in the graft polymerizing method with the carbohydrate (e.g. starch) component. It is well known in the art that it is not inventive to merely follow the disclosure of a prior-art reference.
Finally, it would also have been obvious to one having ordinary skill in the art to use Savich’s disclosure of Examples 1-2 and claim 19, wherein synthesized starch-g-poly (2-propenamide-co-2-propenoic acid) is disclosed, and which reads directly on Applicant’s graft copolymer species of starch-g-poly (2-propenamide-co-2-propenoic acid) as claimed in dependent claim 12, as strong motivation to actually synthesis (2-propenamide-co-2-propenoic acid) using Chambers process. It is notoriously well known in the art that a compound is inseparable from its properties. As such, synthesized starch-g-poly (2-propenamide-co-2-propenoic acid) would inherently have a water absorbance capacity in the range of 500 g/g to 980 g/g as set forth in Applicant’s independent claim 1.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 7-8, 10 and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-4 and optionally over claim 2 of U.S. Patent No. 11,958,925. Although the claims at issue are not identical, they are not patentably distinct from each other when the Patented method comprises a crosslinking agent (see claims 3-4), and when the redox catalyst system comprises a combination of ammonium persulfate and L-ascorbic acid (see independent claim 1 of the Patent). Applicant’s dependent claim 12 is obvious in light of the Patent’s dependent claim 2.
Response to Arguments
Applicant's arguments filed 09/15/26 with the amendment and entered with the RCE filed 09/22/26 have been fully considered but are not persuasive to put the application in condition for allowance for the reasons set forth above. Additional examiner comments are set forth next.
Applicant argues the following: “Without acquiescing to the rejection but to advance prosecution, claim 1 has been amended to require that the superabsorbent polymer has a water absorbance capacity of 500 g/g to 980 g/g. As amended, claim 1 requires an acrylamide-free, room temperature graft polymerization process using ammonium persulfate, a cross-linking agent, and ascorbic acid to produce a superabsorbent polymer having the claimed high absorbance. The amendment is significant because claim 1 now requires not merely selection of known process components, but an acrylamide-free, room temperature process that achieves the expressly claimed water absorbance capacity
Savich does not teach or suggest this process and performance combination. Savich broadly identifies possible materials for superabsorbent compositions, but it does not disclose an acrylamide-free room temperature process using the claimed ammonium persulfate and ascorbic acid catalytic system to obtain a water absorbance capacity of 500 g/g to 980 g/g.”.
Examiner’s rebuttal response. Applicant’s attention is drawn to the following comments made by the Examiner in the above prior-art rejection made over Savich U.S. Patent Application Publication No.: 2007/0163173 A1: “Finally, While Savich does not expressively disclose the water absorbance capacity range of the formed superabsorbent copolymer, Savich does teach in his Examples 1-2 and claim 19, the use of synthesized starch-g-poly (2-propenamide-co-2-propenoic acid), which reads directly on Applicant’s graft copolymer species of starch-g-poly (2-propenamide-co-2-propenoic acid) as claimed in dependent claim 12. It is notoriously well known in the art that a compound is inseparable from its properties. As such, Savich’s synthesized starch-g-poly (2-propenamide-co-2-propenoic acid) would inherently have a water absorbance capacity in the range of 500 g/g to 980 g/g as set forth in Applicant’s independent claim 1.”.
Applicant further argues the following: “Chambers does not cure this deficiency. Although Chambers mentions that acrylic acid can be used without acrylamide, Chambers teaches that acrylamide promotes graft polymer formation and its relied upon examples use acrylamide containing systems. Chambers therefore does not provide a reasonable expectation that acrylamide could be eliminated from the process while still achieving the claimed 500 g/g to 980 g/g absorbance under the claimed room temperature conditions.
Nor would the broad disclosure of possible initiators in Savich have motivated a person of ordinary skill to modify Chambers to arrive at the claimed process with a reasonable expectation of success. The rejection therefore relies on hindsight selection from the references rather than an articulated reason to make the claimed combination.”.
Examiner’s rebuttal response. Please note the Examiner’s newly added comments inserted into the prior-art rejection of claim(s) 1-3, 7-8, 10 as being obvious over Chambers U.S. Patent Application Publication No.: 2013/0303714 A1 in view of Savich U.S. Patent Application Publication No.: 2007/0163173 A1. Said newly added comments are as followed: “Finally, it would also have been obvious to one having ordinary skill in the art to use Savich’s disclosure of Examples 1-2 and claim 19, wherein synthesized starch-g-poly (2-propenamide-co-2-propenoic acid) is disclosed, and which reads directly on Applicant’s graft copolymer species of starch-g-poly (2-propenamide-co-2-propenoic acid) as claimed in dependent claim 12, as strong motivation to actually synthesis (2-propenamide-co-2-propenoic acid) using Chambers process. It is notoriously well known in the art that a compound is inseparable from its properties. As such, synthesized starch-g-poly (2-propenamide-co-2-propenoic acid) would inherently have a water absorbance capacity in the range of 500 g/g to 980 g/g as set forth in Applicant’s independent claim 1.”
Applicant further argues the following: “Claims 1-3, 7-8, 10 and 12 are provisionally rejected on the ground of non-statutory double patenting as allegedly being unpatentable over claims 3 and 4 and optionally over claim 2 of U.S. Patent No. 11,958,925.
Because the claims of the present application and those of the co-pending application are not in condition for allowance, a double patenting rejection cannot be properly determined. Accordingly, Applicant respectfully requests these provisional rejections be held in abeyance until patentable subject matter is identified in two patent properties, with the first such application proceeding to grant without the need for a terminal disclaimer.”
Examiner’s rebuttal response. Applicant’s said traversal arguments make no sense at all because the ODP rejection is made over U.S. Patent Number 11,958,925 and NOT over a co-pending application.
Finally, the examiner’s incorporates the below Examiner comments, made in the previous Final Rejection, because they are still deemed to be relevant to the pending claims.
“Applicant's arguments filed 01/22/26 with the amendment have been fully considered but are not persuasive to put the application in condition for allowance for the reasons set forth above. Additional examiner comments are set forth next.
The previously applied prior-art reference to Doane et al. has been dropped only because Doane et al. neither teaches nor suggests applicant’s independent claim 1 process limitation of: “wherein the process is carried out at room temperature,”.
Contrary to Applicant’s traversal arguments, both applied prior-art references to Savich U.S. Patent Application Publication No.: 2007/0163173 A and Chambers U.S. Patent Application Publication No.: 2013/0303714 A1, disclose graft polymerizing using at least one monomer (e.g. acrylic acid, acrylamide etc.) onto a polysaccharide (e.g. starch) in the presence of at least one initiator to form a polysaccharide graft copolymer. Savich directly discloses ammonium persulfate, L-ascorbic acid etc. as polymerization initiators to form a polysaccharide graft copolymer. Both Savich and Chambers disclose adding a cross-linking agent (e.g. methylene bis-acrylamide) to form a cross-linked polysaccharide graft copolymer. Neither, Savich nor Chambers requires that an acrylamide monomer be used. The use of acrylamide as a monomer/comonomer is only an optional embodiment, see paragraphs [0021]-[0022] of Savich and paragraphs [0037] and [0053] of Chambers.
Furthermore, as stated above, Savich’s paragraph [0013] directly discloses that L-ascorbic acid is an effective polymerization initiator for the invention, which can optionally be used in combination with other types of polymerization initiator (e.g. ammonium persulfate). As such, one having ordinary skill in the art would have strong motivation to actually employ a mixture of L-ascorbic acid and ammonium persulfate in the graft polymerizing method. It is well known in the art that it is not inventive to use two or more materials in combination for the same purpose they are individually known to be useful without a showing of unexpected and superior results.
Finally, the ODP rejection remains for the reasons set forth above.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764
