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 Arguments
Applicant's arguments filed 12/04/2025 have been fully considered but they are not persuasive.
The Applicant has argued that the second Fougerouse declaration establishes the full scope of claim 1.
The Applicant has argued that the other parameters referenced by the Examiner may influence certain criteria such as reaction yield, it is the inverse emulsion polymerization that influences the turbidity and drainage.
Therefore, the Applicant has argued that the data establish that the inverse emulsion polymerization in the presence of the host polymer as claimed results in significant advantages as compared to Chen.
The Applicant also argues that nothing in the prior art suggests the demonstrated magnitude of improvement. Therefore the results are quantitatively exceptional.
The Applicant directs attention to the second Fougerouse declaration which demonstrates that of P-3, I-10, H-3, and C-2, I-10 has the lowest drainage time. The Applicant argues that this indicates the drainage performance is related to the type of polymerization not other factors that were referenced by the Examiner.
The previous Response to Arguments in the Office Action from 7/22/2025 indicated that the inventive examples in the affidavit were not commensurate with the scope of the claims because claim 1 indicates any initiator, pH adjuster, or amount of acrylamide dimethylaminomethacrylate along with any amount of MeCl or water or other reagent can be used.
The Affidavit shows that when keeping the amount of reagent added the same the drainage performance is improved. Therefore, this new Affidavit shows that the inverse emulsion polymerization is what results in the improved drainage performance not other factors.
However, even though the Affidavit shows that drainage is improved while holding for amounts of reagents, examples I-3, I-7, and I-10 are still not commensurate with the full scope of the claims. For example I-3, I-7 and I-10 still teach a specific amount of reagents that is not commensurate with the scope of the claims, as stated in the office action 7/22/2025.
As stated in the prior office action 7/22/2025, Claims I-3, and I-7 teaches the inclusion of specific surfactants in a specific quantity where claim 1 is open to any surfactant.
The examples provided by the Applicant are not reasonably commensurate in scope with the claims. The nonobviousness of a broader claim can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. See MPEP 716.02(d). The Applicant may either narrow the claims such that they are commensurate in scope with the claims; provide additional examples more closely aligned with the full scope of the claims; or provide a reasoned technical discussion indicating how one of ordinary skill in the art could determine a trend that would reasonably extend the experimental data of record to the full scope of the claims.
For example, the Examiner recommends discussion of how while three different polymer complexes cannot include every iteration of claim 1, these complexes are sufficiently different in structure but all result in the same improved feature therefore one of ordinary skill in the art can see that they commensurate with the scope of the entire claim 1.
Response to Amendment
The Applicant has Amended claim 1 to include that the host polymer intentionally acts as a chain transfer agent.
The Applicant has also amended claim 1 to include “wherein said polymer complex has improved drainage performance in paper manufacturing as compared to a corresponding polymer complex obtained by solution polymerization or gel polymerization.”
Regarding the amended term “intentionally,” this does not overcome the previous rejection. Regardless of whether a feature of the prior art is described in the prior art as an intentional feature of the composition, or a feature that is necessarily present in the composition as described, the prior art still reads on the claimed invention.
Regarding the improved drainage performance amendment, the term “improved drainage performance” is a relative term subject to a 112(b) rejection as indicated below.
Election/Restrictions
Regarding claim 22, claim 22 is drawn to a composition. Therefore claim 22 lacks unity of invention with the Group 1 claims 1, 3-5, 14-16 and 21 which are drawn to a polymer complex even though the inventions of these groups require the technical feature of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Chen in view of Blum.
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 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.
Claims 1, 3-11 and 14-22 are 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.
Specifically, claim 1 has been modified to include the term “intentionally” but nothing in the specification supports this.
Additionally claim 1 has been modified to include the term “improved drainage.” This term is not referenced in the specification. The specification references a “dewatering” test; however this is a specific test for a narrow range of materials (Specification, Figures 2, 4, and 6-8). Therefore, the claims currently cover any degree of change in drainage when measured according to any testing method. Claims 3-11 and 14-22 depend from or otherwise require all limitations of claim 1 and are therefore similarly drawn to new matter.
Claims 1, 3-11 and 14-22 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.
The term “improved drainage performance” in claim 1 is a relative term which renders the claim indefinite. The term “improved drainage performance ” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claims 3-11 and 14-22 depend from or otherwise require all limitations of claim 1 and are therefore similarly indefinite.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-5, 14-16 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Chen US 7001953B2 in view of Blum US 2004/0182533.
Regarding claims 1 and 3, Chen teaches a polymer complex formed from water soluble monomers polymerized in the presence of a host polymer (Abstract, Col. 5 Lines 1-5). The host polymer can be cationic (Col. 13 Lines 34-40). Chen also teaches that the complexes can be prepared by water-in-oil polymerization (Col. 11 Lines 18-21). This reads on the claimed inverse emulsion polymerization.
Chen teaches the host polymer can act as a chain transfer agent (Column 5 lines 10-15).
Chen also teaches that the host polymer can be a cationic polymer such as poly(diallyl dimethylammonium halides) and amine/epihalohydrin polyamines in paper manufacture applications (Col. 14 Lines 34-46). However, Chen is silent on the specific cationic polymer.
Blum teaches polymer mixtures useful in the paper industry (Paragraph [0138]). Suitable cationic polymers include poly(diallyl dimethylammonium chloride) and poly(dimethylamine-co-epichlorohydrin-co-ethylenediamine) (Paragraph [0084]). Blum teaches a similar composition for the same application.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the teachings of Chen and Blum to use the amine/epihalohydrin polyamine of Blum which is poly(dimethylamine-co-epichlorohydrin-co-ethylenediamine) as the cationic polymer of Chen because this polymer is recognized as being suitable for use in applications similar to Chen. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07
Regarding claim 4, Chen teaches that the ratio of host polymer to intercalated polymer is 1:100 to 1:5 (Col. 10 Lines 33-50). The limitation relating to the monomer: polymer ratio is a product-by-process limitation and is limited only to the structure implied by the process, not the process steps themselves. The product described by the prior art is identical to a product formed from a 100:1 to 5:1 ratio of monomer to polymer with a 100% conversion rate. This overlaps with the claimed range of 99:1 to 1:99 monomer to polymer ratio with sufficient specificity to establish anticipation.
Regarding claim 5, Chen also teaches that the monomer used in the invention can be acrylamide (Col. 6 Line 19). This reads on the claimed “acrylamide.”
Regarding claim 14, Chen teaches that the ratio of host polymer to intercalated polymer is 1:100 to 1:5 (Col. 10 Lines 33-50). The limitation relating to the monomer: polymer ratio is a product-by-process limitation and is limited only to the structure implied by the process, not the process steps themselves. The product described by the prior art is identical to a product formed from a 100:1 to 5:1 ratio of monomer to polymer with a 100% conversion rate. This overlaps with the claimed range of 99:1 to 1:99 monomer to polymer ratio.
Regarding claim 15, Chen teaches that the ratio of host polymer to intercalated polymer can be 1:25 to 1:5 (Col. 10 Lines 33-50). The limitation relating to the monomer: polymer ratio is a product-by-process limitation and is limited only to the structure implied by the process, not the process steps themselves. The product described by the prior art is identical to a product formed from a 100:1 to 25:1 ratio of monomer to polymer with a 100% conversion rate. This overlaps with the claimed range of 95:5 to 40:60 monomer to polymer ratio.
Regarding claims 16 and 21, Chen teaches that the ratio of host polymer to intercalated polymer can be 1:25 to 1:5 (Col. 10 Lines 33-50). The limitation relating to the monomer: polymer ratio is a product-by-process limitation and is limited only to the structure implied by the process, not the process steps themselves. The product described by the prior art is identical to a product formed from a 100:1 to 25:1 ratio of monomer to polymer with a 100% conversion rate. This overlaps with the claimed range of 95:5 to 40:60 monomer to polymer ratio with sufficient specificity to establish anticipation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LILY K SLOAN/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762