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.
Claims 1-7 and 10-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2005-186016 (referred to as JP ‘016 herein – all references are made to the English language translation).
Regarding claims 1, 5-6, and 18, JP ‘016 teaches a water absorbent resin composition comprising water absorbent resin particles having a particle size in the range of 100-800 microns, preferably 200-500 microns and an oxocarboxylic acid compound having an average particle size in the range of 1-400 microns, preferably 20 to 150 microns ([0004], [0045], and [0059]). JP ‘016 further teaches that the content of the acid compound is preferably 0.05 to 15 % and particularly preferably 0.2-10 % based on the weight of the water absorbent resin particles ([0060]). The composition is useful as an absorbent and it incorporated into absorbent articles such as disposable diapers and sanitary napkins ([0004], [0005]).
Regarding claim 4, JP ‘016 teaches an acid dissociation of the acidic compound is from 2-8 ([0057])
Regarding claims 7 and 11, JP ‘016 teaches that the composition is prepared by mixing the resin particles with the acid compound ([0063]). With respect to claim 11, the preamble is noted. However, the method does not require any steps other than mixing so it is the position of the examiner that claim 11 is met by the teachings of JP ‘016.
Regarding claim 10, JP ‘016 discloses particles sizes for both the resin particles and acid compound which would yield the required ratio ([0045], [0059]).
Regarding claims 15-17, JP ‘016 teaches that the acid compound is an organic acid, including glycolic acid, lactic acid, tartaric acid, malic acid, and citric acid ([0058]).
Regarding claims 2- 3 and 12-14, JP ‘016 does not specifically teach the absorption rates or the difference in absorption rates instantly claimed. However, JP ‘016 discloses the same composition, comprising the same components, in the same sizes and amounts required by the instant claims, and made in the same manner. Therefore, it is the position of the examiner that the composition taught by JP ‘016 would inherently have the absorption rates/difference required by claims 2-3 and 12-14. When the examiner has reason to believe that the functional language asserted to be critical for establishing novelty in claimed subject matter may in fact be an inherent characteristic of the prior art, the burden of proof is shifted to Applicants to prove that the subject matter shown in the prior art does not possess the characteristics relied upon. In re Fitzgerald et al. 205 USPQ 594.
Claims 1-7 and 10-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2019/103317 (referred to as WO ‘317 herein – all references are made to US 202/0122117 used as the English language translation).
Regarding claims 1, 5-6, and 18, WO ‘317 teaches a superabsorbent polymer composition comprising polymer particles (resin particles) with a particles size of about 150-850 microns and an organic acid (acidic compound) having particle sizes of 15-600 microns ([0008]-[0010], [0030], and [0060]). WO ‘317 teaches that the organic acid is included as a mixture with a silicate-based salt where the mixture is included in the content of about 0.5 to about 5 parts by weight based upon 100 parts by weight of the polymer ([0035]). WO ‘317 further teaches that the organic acid is preferably about 97-99% by weight of the mixture ([0032]) and in an example uses 2.97 parts by weight of the acidic component (Example 3). The composition is useful as an absorbent and may be incorporated into hygienic goods such as disposable diapers ([0004], [0007]).
Regarding claims 4, 15-17, and 19, WO ‘317 teaches that the acid compound is an organic acid, including lactic acid, maleic acid, fumaric acid, and citric acid ([0033]). The reference is silent as to the first acid dissociation constant but it is the position of the examiner that since the reference teaches the use of the same acids as required by the instant claims, the acids taught by the reference would inherently have the acid dissociation required by claim 4. When the examiner has reason to believe that the functional language asserted to be critical for establishing novelty in claimed subject matter may in fact be an inherent characteristic of the prior art, the burden of proof is shifted to Applicants to prove that the subject matter shown in the prior art does not possess the characteristics relied upon. In re Fitzgerald et al. 205 USPQ 594.
Regarding claims 7 and 11, WO ‘317 teaches that the composition is prepared by mixing the resin particles with the acid compound ([0062]). With respect to claim 11, the preamble is noted. However, the method does not require any steps other than mixing so it is the position of the examiner that claim 11 is met by the teachings of WO ‘317.
Regarding claim 10, WO ‘317 discloses particles sizes for both the resin particles and acid compound which would yield the required ratio ([0030] and [0060]).
Regarding claims 2- 3 and 12-14, WO ‘317 does not specifically teach the absorption rates or the difference in absorption rates instantly claimed. However, JP ‘016 discloses the same composition, comprising the same components, in the same sizes and amounts required by the instant claims, and made in the same manner. Therefore, it is the position of the examiner that the composition taught by JP ‘016 would inherently have the absorption rates/difference required by claims 2-3 and 12-14. When the examiner has reason to believe that the functional language asserted to be critical for establishing novelty in claimed subject matter may in fact be an inherent characteristic of the prior art, the burden of proof is shifted to Applicants to prove that the subject matter shown in the prior art does not possess the characteristics relied upon. In re Fitzgerald et al. 205 USPQ 594.
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 8 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2005-186016 as applied above for claims 1-7 and 10-18.
The teachings of the JP’016 reference are as described above for claims 1-7 and 10-18.
Regarding claim 8, JP ‘016 teaches that the mixing is performed at a temperature in the range of 10-130 degrees C, but is silent to the relative humidity. One of ordinary skill would recognize that ambient process conditions, including the relative humidity, would impact the time and effectiveness of the mixing process and would have been motivated to optimize those conditions in order to produce the most effective water absorbent composition. Therefore, it would have been obvious to one having ordinary skill in the before the effective filing date of the claimed invention to choose the instantly claimed ranges through process optimization, since it has been held that there the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/103317 as applied above for claims 1-7 and 10-19.
The teachings of the WO ‘317 reference are as described above for claims 1-7 and 10-19.
Regarding claim 8, WO ‘317 teaches that the composition is prepared by mixing and that further that the mixing process is not particilaur limited ([0061]-[0063]) but is silent to the temperature and relative humidity. One of ordinary skill would recognize that ambient process conditions, including temperature and the relative humidity, would impact the time and effectiveness of the mixing process and would have been motivated to optimize those conditions in order to produce the most effective water absorbent composition. Therefore, it would have been obvious to one having ordinary skill in the before the effective filing date of the claimed invention to choose the instantly claimed ranges through process optimization, since it has been held that there the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215.
Response to Arguments
Applicant's arguments filed 10/30/2025 have been fully considered but they are not persuasive.
Applicant argues that the JP reference does not teach the amount of the acidic component. The JP reference does teach the acidic component as discussed in the above 102 rejection. Therefore, the rejection is maintained. The arguments regarding the absorption rates are noted. However, as discussed int eh above 102 rejections, it is the position of the examiner that since the JP reference teaches the same component in the same amounts, that the rates and difference in absorption rates would inherently be the same.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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 CHRISTINA ANN JOHNSON whose telephone number is (571)272-1176. The examiner can normally be reached Monday - Friday, 6am - 2pm.
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/CHRISTINA A JOHNSON/Primary Examiner, Art Unit 1742