DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s arguments filed on 1/6/2026 is persuasive, therefore the Non-Final issued on 10/7/2025 is withdrawn and a new ground of rejection is set forth below.
Response to Amendment
The amendment of claim 32 is supported by the specification.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 26-50 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 26 recites “an aqueous mixture comprising the aqueous liquid comprising dissolved aqueous polymer and undissolved aqueous polymer gel,” however, the specification does not support an aqueous liquid comprising dissolved aqueous polymer and undissolved aqueous polymer gel.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitation “means for pressing” in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. The broadest reasonable interpretation of the limitation is limited by the description in the specification as a pump comprising a twin screw, a progressive cavity pump, a gear pump or an extruder.
Claim Rejections - 35 USC § 103
Claims 26-50 is/are rejected under 35 U.S.C. 103 as being unpatentable over El-Toufaili et al (WO 2019/081324).
Claim 26, 30, 32-33, 36, 42: El-Toufaili teaches a process for producing an aqueous polymer solution comprising the steps of [1 ] providing an aqueous polymer gel comprising 5 % to 45 % by weight of a water-soluble polymer obtainable by polymerization of an aqueous solution comprising water-soluble, monoethylenically unsaturated monomers, [2] comminuting and dissolving the aqueous polymer gel in an aqueous liquid, thereby obtaining an aqueous polymer solution, wherein step [2] comprises [2-1 ] conveying the aqueous polymer gel through a comminution unit, and adding at least a portion of the aqueous liquid into the comminution unit, thereby obtaining an aqueous mixture comprising an aqueous liquid comprising dissolved aqueous polymer and undissolved pieces of aqueous polymer gel, and [2-2] adding the remainder of the aqueous liquid to the aqueous mixture comprising an aqueous liquid comprising dissolved aqueous polymer and undissolved pieces of aqueous polymer gel obtained in course of step [2-1 ] and transferring the aqueous mixture to a dissolution unit dissolving the aqueous polymer gel pieces in the aqueous liquid thereby obtaining an aqueous polymer solution. The comminution unit comprises at least a flow chamber comprising an inlet for aqueous liquid and an outlet, a gel inlet connecting with the flow chamber, a perforated sheet, a rotating cutting knives has a distance of 0-1 mm, a screw spindle pump (i.e. twin screw) can be used to feed the gel into the comminution unit and force the gel pass through the perforated sheet , (Figure 3, page 4, 16:21-36, 17:11-13, 19:12-13, 21:39-40, 25: 1-35).
El-Toufaili does not explicitly teach the ratio of s/d.
However, El-Toufaili teaches the particle size of the aqueous polymer gel pieces obtained in course of step [2-1 ] is not specifically limited. Factors relevant for the particle size include the diameter of the holes in the perforated sheet and the layout and arrangement of the moveable knives and/or moveable water-jets. The three dimensions of the aqueous polymer gel pieces should be no more than 0.5 cm. There is no lower limit necessary for the aqueous polymer gel pieces, since the smaller the pieces the easier it will be for the polymer to dissolve. Frequently, aqueous polymer gel pieces obtained in course of step [2-1] may have a size such that three dimensions are as low as 1 mm or smaller. Often the aqueous polymer gel pieces tend to have three dimensions each of from 1 mm to 5 mm (23:1-9). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust the layout and arrangement of the moveable knives and/or moveable water-jets to make the piece as smaller as possible resulting s/d<1 because this adjustment is easier to implement than smaller diameter of the holes in the perforated sheet, the latter requires higher pressure to press the polymer gel and may cause clog of the holes. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim 27-28: the flow chamber is cylindrical (figure 3). The inlet is arranged higher than the outlet for aqueous mixture.
El-Toufaili does not teach the inlet is arranged lower than the outlet for aqueous mixture, the gel inlet is arranged at the rear base of the cylinder, nor the axis is lead through the front base of the cylinder.
However, rearrangement of parts is held unpatentable because it would not have modified the operation of the device.
Claim 29: El-Toufaili does not teach the x/y ratio.
However, It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the x/y ratio through routine experimentation because the ratio is a result effective variable, the diameter of the cutting system should match the size of perforated sheet so that all the gel strands can be cut into small piece to ease dissolution, the diameter of perforated sheet cannot be larger than the diameter of the flow chamber, a small diameter of perforated sheet will decrease the process efficiency. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim 31: El-Toufaili does not teach the arrangement of holes being at equal distance.
However, El-Toufaili teaches the distance between the holes should be selected such that the mechanical stability of the hole perforated sheet is ensured and that the strings of aqueous polymer gel formed by conveying the gel through the hole do not paste together after passage through the hole (17:35-41). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have holes arranged at equal distance from the center of the sheet to ensure mechanical stability and prevent strands from pasting together.
Claim 34-35: the aqueous gel may be fed into the comminution unit by a pump, such as a screw spindle pump (page 16)
Claim 37-38: the aqueous liquid can be added in course of step 2-1 or in both courses of 2-1 and 2-2 (16:38-45).
Claim 39-41: the aqueous mixture is transferred into a dissolution unit, which can be stirred vessels, recirculating vessels, static mixers, unstirred vessels, in-line dispersing units (25:2-27).
Claim 43: the aqueous polymer solution has a concentration of 0.01-2 wt% (25:30-34).
Claim 44: El-Toufaili teaches the concentration of the aqueous solution is selected according to the intended use of the solution, typically, the concentration is up to 2wt% (25:30-34). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust the concentration when a high concentration product is required.
Claim 45, 50: the polymer gels are aqueous polyacrylamide gels (27:15-20).
Claim 46: the aqueous polymer composition can be transfer to mining filed, oil filed, paper making factory etc. (27:15-20).
Claims 47-48: El-Toufaili teaches polymer gel can be transferred by any means from a polymerization unit to the comminution unit (23:10-12), the aqueous mixture can be transferred through a pipe into the dissolution unit (25:5-7).
El-Toufaili does not teach how to transfer the aqueous polymer composition.
However, using pipeline or containers for transportation is a known method. One skilled in the art would choose a suitable method based on distance, cost etc.
Claim 49: transportation process is inherently a homogenizing process.
Response to Arguments
Applicant’s arguments have been considered but are moot in view of the new ground(s) of rejection.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763