FINAL REJECTION
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 § 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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 7 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.
Dependent claim 2 is indefinite because the monomer species of 2-acrylamido-2-methyl-propanesulfonic acid is excluded by independent claim 1 limitation of: “wherein polymerization is carried out in the absence of acrylamide”. It goes without saying that 2-acrylamido-2-methyl-propanesulfonic acid is an acrylamide.
Likewise, dependent claim 7 is indefinite because the cross linking species of methylene bis-acrylamide is excluded by independent claim 1 limitation of: “wherein polymerization is carried out in the absence of acrylamide”. It goes without saying that is methylene bis-acrylamide is an acrylamide.
Dependent claim 7 is further indefinite because it is directly dependent on claim 6 which has been canceled.
Claims 2 and 7 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Dependent claim 2 is not further limiting of independent claim 1 when the monomer species of 2-acrylamido-2-methyl-propanesulfonic acid is selected because it is excluded by independent claim 1 limitation of: “wherein polymerization is carried out in the absence of acrylamide”.
Likewise, dependent claim 7 is not further limiting of independent claim 1 when the cross linker species of methylene bis-acrylamide is selected because it is excluded by independent claim 1 limitation of: “wherein polymerization is carried out in the absence of acrylamide”.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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.
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 discloses 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.
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.
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 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 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.
Finally, the ODP rejection remains for the reasons set forth above.
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.
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
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