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 § 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.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Tomlin et al., U.S. Patent # 5,618,877 for the reasons outlined earlier.
Response to Arguments/Rule 1.132 Declaration
The Examiner previously apprised Applicant of the teachings of Example 9 of Tomlin while acknowledging that the extent of neutralization was substantially lower than what the claims require. It was subsequently noted that claim 8 evidences that acrylic acid copolymers with neutralization rates of 25-100 mol% were considered to be within the scope of the prior art invention.
In response, Applicant carried out three polymerization experiments of an admixture of acrylic acid, stearyl methacrylate, and methylenebisacrylamide in a cyclosiloxane medium. The acrylic acid is pre-neutralized at rates consistent with the claimed range of 30 mol% to 90 mol%. Applicant notes that the mixture clouds over before turning white, an occurrence that is attributed to the salt form being formed and wherein the acrylic acid salt is insoluble in the cyclosiloxane. They then remark that, “[a]fter adding the polymerization initiator, no significant evolution of temperature and no particular aspect change are observed” and “the process… results in a slurry which, upon analysis, shows a residual ammonium acrylate content exceeding 6% by weight (saturation of the apparatus).”
The intent of the declaration seems to be to establish that the prior art invention is, in fact, not enabled where the degree of acrylic acid neutralization is within the claimed range because the acrylic acid salt becomes unavailable to react by virtue of having been rendered insoluble. However, the Examiner has misgivings with the subject matter of the declaration. It is not-at-all clear from the language of the declaration that the conditions outlined on page 10 of the Specification were implemented in the experiments used to prepared Si-1, Si-2, and Si-3. Specifically, it is not clear whether or not the temperature of the system was raised sufficiently to promote homolytic scission/radical formation from the initiator. Indeed, the language of the declaration says, there is observed “no significant evolution of temperature (upon adding the polymerization initator)” as though the reaction had been expected to proceed without any initial input of heat. The Examiner is aware that free radical polymerization is, in general, an exothermic process but the system must still be heated to a temperature at which the initiator is activated and that crucial aspect is not clearly articulated. Further, it is not insignificant that, in describing the polymerization conditions employed in the production of the target polymers, a temperature of 90° is maintained.
The arguments formulated by Applicants’ representative mostly regurgitate the description/conclusions set forth in the Declaration. The arguments also assert, though, that polymerizations involving monomers conforming with the claimed anionic monomer, hydrophobic monomer, and crosslinking monomer added in similar quantities yield patentably distinct polymers when performed in solvents other than a C1-4 alcohols. More specifically, their properties, but viscosity in particular, are found to differ. However, the claimed copolymers are not bound by a particular viscosity nor is there any evidence on record to suggest that a skilled practitioner of the Tomlin invention would not be able to prepare polymers of comparable viscosity under any set of conditions within the scope of that disclosure.
The only evidence of any consequence in the current record is counter example Q which is directed to a polymer prepared by inverse emulsion polymerization that is similar in terms of its chemical makeup to example N, but has a recorded viscosity 90% lower. At the same time, the copolymer of inventive Example K has a viscosity that, while higher than that of Comparative Example Q, is much closer to that of Comparative Example Q than that of Example N. Hence, Applicant cannot really use this as a criterion on which to argue distinctness.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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January 26, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765