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 .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 29 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kohl et al., U.S. Patent Application Publication No. 2015/0027637 for the reasons outlined previously.
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.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Kohl et al., U.S. Patent Application Publication No. 2015/0027637 in view of Imai et al., U.S. Patent # 4,001,159 and the product data sheet for Polysciences product No. 03032 for the reasons outlined previously.
Response to Arguments
It is Applicants’ position that, insofar as Kohl only makes passing allusion to the employment of polyvinyl ether as one suitable permutation of a thickening agent, that it should be regarded as not enabling of the claimed polyvinyl ether compound. The Examiner respectfully disagrees. As an initial matter, it is the position of the office that, where a reference mentions a class of polymer material without specifying copolymers thereof as is the case in Kohl, a practitioner of the prior art invention would at least at once envisage homopolymers of said class. The Examiner concurs that one of ordinary skill is not necessarily motivated by the subject matter of this reference alone to choose polyvinyl ether homopolymers adhering to the glass transition temperature stipulated in claim 23. At the same time, in those circumstances where a disclosure references various permutations of a component, but is not especially forthcoming as to what species might be encompassed within said permutations (permutations are, themselves, genera), that person would at least consult the related prior art to ascertain what has previously been disclosed as suitable in a similar context.
Kohl, Applicant accedes, mentions polyvinyl ether in association with the prior art thickener component. “Polyvinyl ether” connotes a genus of compounds although, to reiterate, the Examiner strongly believes that homopolymers would be inferred. Analogous prior art would, like Kohl, be directed to those compositions for which the base polymer is a polyoxyalkylene, polyacrylate, or polyolefin as these are characterized as the main ingredients of that composition. Imai meets this criterion to the extent that it too features a polyacrylate/polyolefin, actually an olefin/acrylate copolymer, as the primary host polymer material. As such, it would be regarded by the practitioner of Kohl’s invention as a logical teaching reference for specific embodiments of the polyvinyl ether were it to disclose any, which it does.
The Examiner recognizes that poly(methyl vinyl ether) must be gleaned as a species within a sub-genus of a larger genus. That is to say, Kohl admittedly teaches various embodiments of a thickener numbering about 35, some of which are actually classes/genera of materials themselves, including the class of polyvinyl ethers in [0031]. On the other hand, MPEP 2131.02 states that A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (The claimed compound was named in a reference which also disclosed 45 other compounds. The Board held that the comprehensiveness of the listing did not negate the fact that the compound claimed was specifically taught. The Board compared the facts to the situation in which the compound was found in the Merck Index, saying that "the tenth edition of the Merck Index lists ten thousand compounds. In our view, each and every one of those compounds is ‘described’ as that term is used in [pre-AIA ] 35 U.S.C. 102(a), in that publication."). Id. at 1718. Accordingly, notwithstanding the fact that polyvinyl ethers are mentioned alongside about 34 other types of thickener, their mention may be regarded as anticipatory of the claimed homopolymer of a vinyl ether monomer (claim 23) as the Examiner regards homopolymers thereof as at once envisaged.
As for the polyvinyl ether homopolymer of claim 29, it is first necessary to choose the polyvinyl ether class of compounds from the list of thickeners in [0031] of Kohl, recognizing homopolymers as immediately foreseen. It is then required that one pick a species from the genus that is polyvinyl ether polymers, but the number of species within this sub-genus is not so large when one considers only those previously documented to have utility as thickeners. These considerations in combination with the fact that Imai teaches using a specific species of polyvinyl ether, poly(vinyl methyl ether), as a thickener for a similar base polymer lend to the conclusion that the Examiner has not relied upon improper hindsight when deeming claim 29 prima facie obvious.
Allowable Subject Matter
Claims 17-22, 24-28, and 30-31 remain allowable for the reasons already of record.
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 MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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May 4, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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