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
As indicated in the Examiner’s Interview on 5/12/2026, the term “improved” drainage in the claim 1 presented on 11/24/2025 is as a relative term. The amendment filed 5/21/2026 specifies the testing method indicating one of ordinary skill in the relevant art would be able to determine what constitutes an improvement when evaluating DDA test results therefore the 112(b) rejection of claim 1 is withdrawn. The new matter rejection of claim 1 is also withdrawn.
Response to Arguments
Applicant's arguments filed 5/21/2026 have been fully considered but they are not persuasive.
Specifically the Applicant argues that Chen is fundamentally directed to non-grafted interjacent complexes. The Applicant indicates that the host polymer of Chen is intended to remain as inert as possible during polymerization, specifically quoting “the great bulk and majority of host polymer molecules and polymer molecules formed during polymerization are not grafted interlinked or covalently bonded to each other.” The Applicant argues the claimed invention requires an intentional transfer agent behavior where this is further established via declarations.
However, the term “great bulk” is not defined by Chen, however “majority” indicates 50% or more therefore, Chen permits grafting below 50%.
The Applicant additionally argues that a substance that is unintended to react as a transfer agent is not a transfer agent.
The IUPAC definition provided by the Applicant states that a chain transfer agent is a substance “able to” react with a chain carrier. Chen acknowledges this capability and the definition does not require intent.
The claims don’t specify a degree of grafting and the combined prior art results in a composition obtained from identical materials through identical methods. Additionally, the 5/19/25 declaration shows that Chen results in DDA improvement even if unmodified (28.9%).
Further, claim 1 is significantly broader than the exemplified compositions. The claim is open to any water-soluble monomer; while the examples showing the improved drainage results use acrylamide and DMAEA.
There is no evidence or technical argument that would suggest the results associated with these two monomers extend to the full scope of all water-soluble monomers capable of participating in inverse emulsion polymerization. The opinion recited in the 12/4/25 declaration, is not supported by any data or technical reasoning.
The Examiner suggests amending the claims to narrow the monomers to a combination of acrylamide and DMAEA or to use the amendments suggested in the Examiner’s interview on 5/12/2026.
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.
Chen in view of Blum is silent on the improved drainage performance as determined by DDA testing. Nevertheless, products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. Therefore the polymer complex of Chen in view of Blum as described above will therefore necessarily possess the claimed improved drainage performance.
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.
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.
Allowable Subject Matter
Claim 23 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 23, Chen in view of Blum is silent on the host polymer having a Brookfield viscosity of from about 30 cps to about 850 cps, measured at 23 °C in an aqueous solution containing 50 wt% active host polymer. As indicated in the interview on 5/14/2026, the limited viscosity range is representative of the full claim scope because the improved drainage properties are maintained despite the large difference in viscosity.
Conclusion
THIS ACTION IS MADE FINAL. 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 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
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