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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/6/2026 has been entered.
Election/Restrictions
Claims 10-15 and 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/15/2025.
Response to Amendment
The amendment filed on 1/6/2026 has been entered. Claim(s) 1 is/are currently amended. Claim(s) 4 has/have been cancelled. Claim 18 is new. Claim(s) 1-3 and 5-18 is/are pending with claim(s) 10-15 and 17 withdrawn from consideration. Claim(s) 1-3, 5-9, 16 and 18 is/are under examination in this office action.
Response to Arguments
The Declaration under 37 CFR 1.132 filed 1/6/2026 is insufficient to overcome the rejection of claims 1-3, 5-9, 16 and 18 based upon 35 U.S.C. 103 as set forth in the last Office action because:
The Declarant argued that Emulsion polymerization of hydrophobic monomers is a challenge, especially if a high content of hydrophobic monomers needs to be incorporated into the polymer via emulsion polymerization and therefore incorporation of high content of hydrophobic monomers is not analogous to emulsion polymerization of less hydrophobic monomers or of mixtures with 8 lower content of hydrophobic monomers. The Declarant cited Asua et al. Prog. Polym. Sei. 27 (2002) 1283-1346, on page 1284 and 1285. Applicant also cited Zhang et al WO2013075293, which taught the difficulty of polymerizing large amount of hydrophobic monomers using known techniques of emulsion polymerization.
In response, arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965), MPEP 716.01(c). The Declarant did not provide actual evidence to support the conclusions. Even if the cited references teach that emulsion polymerization of large amount of hydrophobic monomers is challenging, the prior art of Baloche teaches emulsion polymerization of 50-100% of n-alkyl(meth)acrylate monomers, with n a variant of 6 to 40, preferably 14 to 30 [0016]. Example 1 of Baloche teaches 100 % of behenyl acrylate (hydrophobic monomer) [0040]. This teaching is sufficient to encourage one of ordinary skill in the art at the time of filing to incorporate large amount of hydrophobic monomers by emulsion polymerization.
Applicant's argument filed on 1/6/2026, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that Miao teaches small amounts of octadecyl acrylate in examples 1-4. Miao fails to suggest emulsion polymerization of a high amount of hydrophobic monomers, one of ordinary skill in the art would have had no motivation to have selected at least two sulfosuccinates as claimed. Further, based on emulsion polymerization of only minor amounts of hydrophobic monomer, there would have been no expectation of success insofar as emulsion polymerization of normal hydrophobicity is commonplace.
In response, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments; and patents are relevant as prior art for all they contain; nonpreferred and alternative embodiments constitute prior art (see MPEP 2123). Miao generally teaches 84-119 parts of acrylate monomer (26-42 parts in step 2 and 58-77 parts in step 3) and the acrylate monomers can be octadecyl acrylate [page 2, second last para.]. Miao does not teach away from emulsion polymerization of a high amount of hydrophobic monomers. There is no teaching that would prevent one of ordinary skill in the art at the time of filing to use the combination of surfactants suggested by Miao for emulsion polymerization of a high amount of hydrophobic monomers. Besides, one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references. In re Keller, 642 F.2d 413,426 (CCPA 1981). Miao is cited by the Examiner to teach the specific surfactant, not the monomer. The primary reference Baloche teaches emulsion polymerization of large amount of hydrophobic monomers with specific example. The combination of Baloche and Miao is sufficient to encourage one of ordinary skill in the art at the time of filing to incorporate large amount of hydrophobic monomers by emulsion polymerization.
Applicant argued that to the extent that Baloche Example 1 uses a single sulfosuccinate surfactant, in choosing a further surfactant, there would have been no motivation to have excluded any of, for example, non-ionic surfactants, sulfates, alkylbenzene sulfonates. quaternary ammonium salt, described as acceptable by Baloch et al.
In response, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments; and patents are relevant as prior art for all they contain; nonpreferred and alternative embodiments constitute prior art (see MPEP 2123). Baloche teaches one or two more surfactants including sulfosuccinates as stated in the 103 rejection. Miao teaches an emulsifier combination of two different sulfosuccinates for emulsion polymerization of acrylate monomers [p.4 Example 1]. It would have been obvious to one of ordinary skill in the art at the time of filing to use Miao’s combination of two different sulfosuccinates in Baloche’s composition, as Baloche teaches that the surfactant system can have more than one succinate surfactants; and Miao teaches that the combination of two different sulfosuccinates is suitable for this application. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07. By using the combination of two different sulfosuccinates taught by Miao, the emulsifier system meets the recited “consisting of” at least two different sulfosuccinate emulsifiers.
Applicant argued that Baloche et al. and Miao lie in a totally different technical fields (paraffin inhibitors for crude oils versus leather chemicals) and the skilled person has no incentive to combine them.
In response, a reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). In re Bigio, 381 F.3d, MPEP 2141.01(a).I. In the current case, Baloche and Miao teaches similar polyacrylate dispersion and using the same emulsifier to stabilize the dispersion. Thus, Baloche and Miao are reasonably pertinent to the same problem of stabilizing the dispersion using emulsifier systems. Therefore, it is reasonable to combine Miao’s emulsifier with Baloche’s emulsifier.
Applicant argued that the monomers of the polyacrylate polymers of Miao are short-chain acrylate.
In response, Miao teaches that the acrylate comprises octadecyl acrylate [0015] or stearyl acrylate [0032], which is a long chain acrylate with n=18.
Applicant argued that Baloche et al. discloses a content of unsaturated acid of only 0- 0.5 wt % ( 0019]). There is no disclosure of a unsaturated acid content of 2-5 wt. % (claim 18).
In response, the recited 0-0.5 wt% of the ethylenically unsaturated moncarboxylic and/or dicarboxylic acids or anhydrides is only when the composition does not contain one or more polar monomers that are selected from among the (meth)acrylamides and their derivatives [0019]. However, when the composition comprises one or more polar monomers that are selected from among the (meth)acrylamides and their derivatives, the amount of the ethylenically unsaturated moncarboxylic and/or dicarboxylic acids or anhydrides is up to 40 wt% [0020]. Baloche teaches that the amount of the one or more polar monomers that are selected from among the (meth)acrylamides and their derivatives can be 0-50 wt% [0018]. It would have been obvious to one of ordinary skill in the art at the time of filing to add one or more polar monomers that are selected from among the (meth)acrylamides and their derivatives to the composition; therefore, the amount of the ethylenically unsaturated moncarboxylic and/or dicarboxylic acids or anhydrides is up to 40 wt%.
Applicant argued that the polymer dispersions according to the invention demonstrated stable flow properties, good filterability, low coagulate, reducing the pour point of crude oils, and great storage stability performance.
In response, Applicant seems to argue that the claimed polymer dispersion has unexpected properties. However, whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980); MPEP 716.02(d). In the instant case, the examples are not commensurate in scope with the claims. For instance, claim 1 recites a copolymer unit (a1) having formula (1) with n≥16, which covers a wide variety of monomers depending on the choice of R and R’. However, the examples in the specification only employ two monomers (BEMA and BEA) with n=22 only. It is not known if other long chain acrylates will give the same results. Claim 1 recites 30% to 99.9% of (a1). However, the examples only employ 95% (160.55g in Ex.3d) and 98% (165.70g in Ex.3a, 3b, 3c, 3e and 3f) [P22-23 Table 3 spec.]. It is not known if lower than 95% of (a1), e.g., 30%, will give the same results. Similarly, the claimed ranges for (a2), (a3), (a4), and (b) are significantly wider than the examples provide. Since the examples are not reasonably commensurate with the full scope of claimed materials, and the Applicant has not provided any additional information that would allow one skilled in the art to extend the results associated with the data to the full scope of the claim, the examples cannot be relied upon to establish non-obviousness of the claimed invention.
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.
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 factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3, 5-9, 16 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baloche et al (US 20070244239 A1) in view of Miao (CN 108047868 A, machine translation is referenced herein).
Regarding claims 1-3, 5 and 7-8, Baloche teaches an acrylic polymer dispersion comprising (1) 5-70 parts of a copolymer with (A) 50-100% of one or more n-alkyl(meth)acrylate monomers with n a varying from 6 to 40 (e.g., behenyl acrylate [0040]) and (D) up to 40% of ethylenically unsaturated monocarboxylic and/or dicarboxylic acids or anhydrides, (2) 0 to 30 parts by weight of a co-solvent (e.g., butanol, isopropanol, ethylene glycol), (3) 0.1 to 10 parts of one or more surfactants including sulfosuccinates, and (4) water (sufficient quantity for 100: the sum of constituents (1) to (4) that represents 100 parts by weight) [0014-0023].
The examiner submits that the (A) behenyl acrylate reads on the claimed (a1), as specified in claim 7. Its amount of 50-100% overlaps the claimed 50-99.9%. A prima facie case of obviousness exists where the claimed ranges overlap ranges disclosed by the prior art (MPEP 2144.05.I).
The (D) ethylenically unsaturated monocarboxylic and/or dicarboxylic acids or anhydrides reads on the claimed (a2). Its amount of up to 40% overlaps the claimed 0.1-10%.
Baloche does not teach the claimed (a3) or (a4), meeting the claimed amount of 0-49.9% and 0-30%, respectively.
Thus, Baloche’s copolymer reads on the claimed copolymer (a). Its amount of 5-70 parts overlaps the claimed 10-70 parts.
The one or two more surfactants including sulfosuccinates read on the claimed at least two sulfosuccinate emulsifiers (b).
Baloche teaches sodium bistridecyl sulfosuccinate as the sulfosuccinate surfactant [0039]. In addition, Baloche teaches that the surfactant system can have more than one sulfosuccinates [0022].
Miao teaches a dispersion composition comprising polyacrylate with monomers such as stearyl acrylate and methacrylic acid. Thus, this acrylic dispersion is compositionally similar to Baloche’s acrylic dispersion.
Miao teaches an emulsifier combination of dioctyl sodium sulfosuccinate and fatty alcohol-polyoxyethylene ether disodium sulfosuccinate [p.4 Example 1]. It would have been obvious to one of ordinary skill in the art at the time of filing to combine dioctyl sodium sulfosuccinate and sodium bistridecyl sulfosuccinate as the sulfosuccinate surfactants in Baloche’s composition, as Baloche teaches that the surfactant system can have more than one succinate surfactants; and Miao teaches that dioctyl sodium sulfosuccinate is suitable for this application (as an emulsifier for acrylic dispersion). It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Dioctyl sodium sulfosuccinate and the claimed sodium bis(2-ethylhexyl) sulfosuccinate are isomers.
Isomers are compounds with the same formula but a different arrangement of atoms in the molecule. Isomers “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), MPEP 2144.09.II. Additionally, Miao describe similarities in utility of dioctyl sodium sulfosuccinate and claimed sodium bis(2-ethylhexyl) sulfosuccinate: they are both emulsifiers in acrylic dispersions.
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979); MPEP 2144.09.
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Miao to substitute dioctyl sodium sulfosuccinate with the claimed sodium bis(2-ethylhexyl) sulfosuccinate as the surfactant, as both compounds are expected to possess similar properties and have similar utility.
The combination of sodium bistridecyl sulfosuccinate and sodium bis(2-ethylhexyl) sulfosuccinate reads on the emulsifier system in claims 2-3 and 5.
The butanol, isopropanol, ethylene glycol reads on the claimed water-miscible cosolvent (c), as specified in claim 8 and evidenced by the applicant [p.12 lines 24-27 spec.]; and its amount of 0 to 30 parts overlaps the claimed 1 to 40 parts.
Baloche’s surfactants comprise one or more further surfactants other than the sulfosuccinates [0022], reading on the claimed (d).
Baloche teaches other components, e.g., additives [0024], reading on the claimed (e).
The water of sufficient quantity for 100 reads on the claimed (f).
Regarding claim 6, Miao teaches 8 parts of dioctyl sodium sulfosuccinate and 7 parts of atty alcohol-polyoxyethylene ether disodium sulfosuccinate in one example [p.4 Example 1]. It would have been obvious to one of ordinary skill in the art at the time of filing to select a ratio of 8/7 for the ratio of sodium bis(2-ethylhexyl) sulfosuccinate to sodium bistridecyl sulfosuccinate in the composition of Baloche in view of Miao, as Miao demonstrate that this ratio is suitable for similar acrylic dispersion. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Alternatively, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In the current case, Baloche suggests the use of one or more succinates as stated above. This means that if two succinates are used, the two succinates are treated as equivalents as equally suitable alternatives to one another. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine the succinates identified above in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are equally suitable for use in this capacity. Including the two succinates in a 1:1 ratio meets the claimed ratio of 1:10 to 10:1.
Regarding claims 9 and 16, since the amount of the claimed further surfactant can be 0%, the prior art does not have to teach this limitation. Nevertheless, Baloche teaches that the performance level of the products can be improved in particular by adding surfactants of low HLB (used to ensure hydrophilic-lipophilic balance), preferably less than or equal to 5, such as the fatty sorbitan esters [0035]. The low HLB surfactants read on the claimed water-in-oil emulsifiers as specified in claim 16. Also, fatty sorbitan esters are art recognized as water-in-oil surfactants.
Regarding claim 18, Baloche teaches 50-100% of one or more n-alkyl(meth)acrylate monomers, overlapping the claimed 95-98 wt% of monomer (a1). Baloche teaches up to 40% of ethylenically unsaturated monocarboxylic and/or dicarboxylic acids or anhydrides, overlapping the claimed 2-5 wt% of monomer (a2). Baloche teaches 0.1 to 10 parts of one or more surfactants including sulfosuccinates, overlapping the claimed 0.5-5 parts of said emulsifier system. A prima facie case of obviousness exists where the claimed ranges overlap ranges disclosed by the prior art (MPEP 2144.05.I).
Conclusion
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762