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 .
Election/Restriction
Applicant's affirmation of the election with traverse of Group I, claims 14-21 in the reply filed on 10/23/25 is acknowledged. The traversal is on the ground(s) that Graf' 545 does NOT anticipate or render obvious the common inventive concept of the claimed inventions. This is not found persuasive because of the art rejections below.
The requirement is still deemed proper and is therefore made FINAL.
Claims 22-33 remain withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 14-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 14, from which the balance of the claims depend, recites a “method for improving immediate adhesiveness of a spreading cationic emulsion of hydrocarbon binder to solid particles, the immediate quantitative adhesiveness of the cationic emulsion being greater than 90% after less than eight water washes, as measured according to the modified test (AFNOR Nl23-A2f, 2019) of TS 16346(2013) standard [emphasis added]”. Is the immediate quantitative adhesiveness of the cationic emulsion of “greater than 90% after less than eight water washes” referring to the resulting immediate adhesiveness of the spreading cationic emulsion of hydrocarbon binder, or the immediate adhesiveness of the spreading cationic emulsion of hydrocarbon binder prior to the “improvement”? It is unclear what binder in the process this property is actually referring to.
Also, the term “molecular weight" used in claim 14, from which the balance of the claims depend, is still vague and imprecise as if does not specify the type of “molecular weight" being measured, as the values vary: the number-average molecular weight, the weight-average molecular weight, the z-average molecular weight, etc. This casts doubt on the meaning of the technical feature to which it refers, thus the subject matter of the claimed invention is not clearly defined. This language is repeated in claim 15.
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 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(s) 14-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, 35 U.S.C. 103 as being unpatentable over Graf (CA 1,114,545).
On page 3, line 12 to page 4, line2, Table 1, tests 7, 8, 14, 19-24, tables 2 and 3, Graf teaches preparing and spreading a cationic emulsion comprising from 0.01 to 3% of polyelectrolyte precursors (anionic polymers) and a hydrocarbon binder on solid particles, using a fully neutralized or ph-sensitive polyacrylic acid copolymer (See page 11, line 14), wherein the anionic polyelectrolyte has an average molecular weight of at least 1000 (See page 9, lines 24-27).
While Graf does not expressly disclosed the anionicity level or pKa of their anionic polyelectrolyte, it is reasonable that the anionic polymers of Graf would possess the presently claimed properties since the anionic polymers in Graf are also prepared from acrylic acid, as in the present process. The composition in the process is essentially the same as the claimed composition and the USPTO does not have at its disposal the tools or facilities deemed necessary to make physical determinations of the sort. In any event, a process of using an otherwise old composition is not patentable regardless of any new or unexpected properties of the composition. In re Fitzgerald et al , 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Even if assuming that the prior art references do not meet the requirements of 35 U.S.C. 102, it would still have been obvious to one of ordinary skill in the art, at the time the invention was made, to arrive at the same inventive process because the disclosure of the inventive subject matter appears within the generic disclosure of the prior art.
Response to Arguments
Applicant's arguments and declaration filed 10/23/2025 have been fully considered but they are not persuasive.
Regarding the 112 rejection, applicant argues that the “manufacturer of these polymers did not consider it necessary to specify here that the molecular weight of the polymers is a weight average molecular weight, as this detail is known to anyone working in this technical field.” This argument is not found persuasive. For the claims in the patent application to particularly point out and distinctly claim the subject matter which the inventor or a joint regards as the invention, the type of “molecular weight" being claimed must be specified in the claims. The claimed molecular weight is still indefinite.
Regarding Graf, as stated above, it is unclear which binder the recitation of improved immediate adhesiveness in the preamble is in reference to.
In response to applicant's argument that Graf does NOT relate to cationic emulsions to be spread onto solid particles and the binders in Graf are for coating and not spreading, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
In response to applicant's argument that the anionic polymer has an anionicity rate ranging from 50 to 100% and a pKa ranging from 4 to 5 or a spreading cationic emulsion of hydrocarbon binder with improved immediate adhesiveness to solid particles, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Regarding the declaration, contrary to the broad “anionic polymer” recited in the claims, the examples in the specification are very limited to a commercial product from one manufacturer. The declaration is not persuasive as the referenced examples are not commensurate in scope with the present claims.
The composition of Graf is still essentially the same as the claimed composition and the USPTO does not have at its disposal the tools or facilities deemed necessary to make physical determinations of the sort. In any event, a process of using an otherwise old composition is not patentable regardless of any new or unexpected properties of the composition. In re Fitzgerald et al , 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Even if assuming that the prior art references do not meet the requirements of 35 U.S.C. 102, it would still have been obvious to one of ordinary skill in the art, at the time the invention was made, to arrive at the same inventive process because the disclosure of the inventive subject matter appears within the generic disclosure of the prior art.
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 KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE