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 .
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.
3. Claims 1, 3 have been amended, claims 6-11 have been withdrawn, new claim 12 has been added and claims 1-12 are pending as amended on 03/05/26.
4. The new ground of rejection set forth below for claims are necessitated by Applicant's amendment filed on 03/05/26. In particular, claim 1 has been amended to include features “wherein the one or more brush polymer containing oxyalkylene side chain groups have a weight average molecular weight of 300,000 g/mol or more.” Now, the scope of independent claim 1 and the claims depends from claim 1 are changed. For this reason, the present action is properly made final.
5. Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
6. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Priority
This application is a 371 of PCT/US2021/052489 09/29/2021; PCT/US2021/ 052489 has PRO 63/087,393 10/05/2020.
Response to Amendment
8. Applicant's amendment filed on 03/05/26, has been fully considered and entered.
Response to Arguments
9. Applicant's arguments with respect to objection of claims 3 filed on 03/05/26, have been fully considered but are moot in view of amendment of claim. Previous objection has been withdrawn.
10. Applicant's arguments with respect to rejection of claims 1-5 under 35 U.S.C. 103 as being unpatentable over Yamashita (US 2002/0050232) filed on 03/05/26, have been fully considered but are moot in view of amendment of claims. Applicants arguments have been respectfully considered but are not persuasive. Regarding claim 1 amended feature “wherein the one or more brush polymer containing oxyalkylene side chain groups have a weight average molecular weight of 300,000 g/mol or more,” Yamashita discloses weight average molecular weight of 10,000 to 300,000 (para [0060]) overlapping at end point of the claimed range 300,000 g/mol or more.
The examiner takes note of the fact that the prior art’s weight average molecular weight of 10,000 to 300,000 overlaps the claimed range of 300,000 g/mol or more at an end point. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Further, it has been noted that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). MPEP 2323 (II). In view of amendment to claims and response, a new ground(s) of rejection is made.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-5, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita (US 2002/0050232).
Regarding claim 1, Yamashita discloses an aqueous cement composition comprising water aqueous medium (read on the aqueous medium is at least 90 wt% water) (para [0031]), polymer containing acrylic containing oxyalkylene side chain group (para [0011]-[0015], [0036]), polymerization residue of an initiator (para [0064]), aromatic cofactors such as ligninsulfonic acid salts or naphthalenesulfonic acid-formalin condensation products (para [0095]), wherein ethylenically unsaturated carboxylic acid is in copolymerized form containing oxyalkylene side chain, wherein the polymer is fixed on inorganic powder such as silica fine powder and then dried (read on polymer brush; para [0033]-[0052], [0079]). Yamashita further discloses the solid content not less than 20 weight % (para [0080]), overlapping claimed range of from 8 to 60 wt%.
A prima facie case of obviousness exists, wherein Yamashita discloses the solid content not less than 20 weight %, overlapping the requirement of claim 1. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Yamashita further discloses the copolymerization reaction is carried out in a pH of lower than 5, and the pH is adjusted to not lower than 5 after the copolymerization (para [0079]), overlapping at end point of the claimed pH of the composition from 1 to 5.
The examiner takes note of the fact that the prior art’s pH range of not lower than 5 overlaps the claimed range of 1 to 5 at an end point. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Regarding claim 1 amended feature “wherein the one or more brush polymer containing oxyalkylene side chain groups have a weight average molecular weight of 300,000 g/mol or more,” Yamashita discloses weight average molecular weight of 10,000 to 300,000 (para [0060]) overlapping at end point of the claimed range 300,000 g/mol or more.
The examiner takes note of the fact that the prior art’s weight average molecular weight of 10,000 to 300,000 overlaps the claimed range of 300,000 g/mol or more at an end point. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
The claimed recitation “for use as a thickener and water retention aid” has been given little patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
In the instant case, the preamble in claim 1 merely recites the intended use of the composition, wherein the prior art can meet this future limitation by merely being capable of such intended use.
Regarding claim 2, Yamashita discloses the composition contains substantially no salt or no added salt excluding any one or more initiators or the polymerization byproducts thereof (para [0031]). Yamashita further discloses the copolymerization reaction is carried out in a pH of lower than 5, and the pH is adjusted to not lower than 5 after the copolymerization (para [0079]), is close enough to the claimed pH of the composition from 1 to 5. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 3, Yamashita discloses 15.9 mol% unsaturated polyalkylene glycol ether (AO) and 84.1 mol% acrylic acid (AA) (table 6, ex 1-4; results in 5.29:1 (AA:AO)), fall into claimed 0.1:1 to 10:1.
Regarding claim 4, Yamashita discloses 18 mol% unsaturated polyalkylene glycol ether (AO) and 82 mol% acrylic acid (AA) + methacrylic acid (MAA) (table 6, ex 2-2; results in 4.55:1 (AA+MAA:AO)), fall into claimed 0.2:1 to 5:1.
Regarding claim 5, Yamashita discloses the solid content not less than 20 weight % (para [0080]), overlapping claimed range of from 10 to 40 wt%.
A prima facie case of obviousness exists, wherein Yamashita discloses the solid content not less than 20 weight %, overlapping the requirement of claim 5. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Regarding claim 12, Yamashita discloses weight average molecular weight of 10,000 to 300,000 (para [0060]) overlapping at end point of the claimed 1 range 300,000 g/mol or more and claim 12 range of 50,000,000 g/mol or less.
The examiner takes note of the fact that the prior art’s weight average molecular weight of 10,000 to 300,000 overlaps the claim 1 range 300,000 g/mol or more and claim 12 range of 50,000,000 g/mol or less at an end point. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Conclusion
Reference Rohm & Haas (WO 2016/081112) was cumulative in nature to the above rejection and thus not set forth.
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 KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RANDY P GULAKOWSKI can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KUMAR R BHUSHAN/ Primary Examiner, Art Unit 1766