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 .
The applicant has materially amended the claims and scope thereof thereby necessitating new/amended grounds of rejection as more fully below set forth.
The amendments over come the previous rejections under section 112.
The amended claims find support in the original filing; no new matter is presented.
The rejections below set forth directed to the now method claims which were previously composition claims are brought under section 103 for obviousness due to overlapping ranges as more fully below set forth. The rejection for the composition remains under section 102/103 as it remains a product by process claim.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/1/24 has previously been considered by the examiner.
Claim Rejections - 35 USC § 102
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
CLAIM INTERPRETATION AND INTRODUCTION
The following claim interpretation and introduction is expressly incorporated into each and every rejection below as though fully set forth therein.
The rejections are brought in the alternative claim 15 due to the product by process nature of the claims.
PRODUCT BY PROCESS CLAIMS/LIMITATIONS:
Claim 15 is directed to a product by process
Giving the claims the broadest reasonable interpretation in view of the specification the preamble of claim 1 is afforded weight as to the requirement for cement in the composition. MPEP 2111.02 The composition then further comprises an oxidized polysaccharide claimed as a product by process. However claims 10-12 and claims 15-16 do not appear to require a cement claim 15 is directed to an admixture for cement (i.e. an intended use rather than a cementous composition)
The prior art below cited discloses oxidized polysaccharides prepared with the claimed reactants under conditions which meet and/or overlap the instantly claimed conditions and therefor meets the limitations for same anticipating the product of an oxidized polysaccharide where the applicant has not claimed any structure The product will therefore possess any claimed functionality including but not limited to water reducing agent.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990))(emphasis added by examiner)
The prior art teaches an oxidized polysaccharide thereby meeting the limitation for the product of an oxidized polysaccharide. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (emphasis added by examiner)
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983) (emphasis added by examiner)
"[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). (emphasis added by examiner)
A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)).
While the prior art teaches many of the process steps using the claimed materials, in some instances the prior art does not expressly recite the claimed ranges of temperature, time, weight, etc. Because the claims are drafted as product by process and the product is an oxidized polysaccharide and the prior art teaches the claimed starting materials and claimed reaction of oxidation using many of the same (and/or similar) oxidizing agents where claimed the examiner maintains the product of the oxidized polysaccharide meets the instantly claimed oxidized polysaccharide. No structure is recited in the claims. Based on the teachings of the cited prior art one of ordinary skill in the art could readily envisage the various types of alkali/alkaline agents including but not limited to hydroxides and salts thereof.
PREAMBLE/INTENDED USE
The prior art below cited discloses oxidized polysaccharides and therefor meets the limitations for same. The prior art teaches the claimed product as such it is capable of the intended use. Claims 15 does not appear to require a cement claim 15 is directed to an admixture for cement (i.e. an intended use rather than a cementous composition)
If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)
RANGES:
The prior art teaches ranges which meet and/or overlap the instantly claimed ranges as more fully below set forth thereby rending same obvious. See MPEP 2144.05(I): "In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)" Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) One of ordinary skill in the art would readily envisage or in the alternative optimize the reaction conditions for oxidation of polysaccharides by adjusting the amount of the reactants including limiting reactants, the temperature and time for reaction to ensure a complete reaction and optimize yield and purity. Since the polysaccharide oxidated product is added to cement one of ordinary skill in the art could ascertain an effective amount to achieve a desired effect with a reasonable expectation of success.
Absent evidence of criticality the ranges are obvious. Regarding the amounts, as above set forth one of ordinary skill in the art at the time of filing the invention can identify effective amounts to add to cement with a reasonable expectation of success.
Where ranges are claimed the examiner maintains the range is either taught as more fully set forth in the below cited prior art, or that they are rendered obvious to one of ordinary skill in the art as above and below set forth.
Optional steps and compositions/compounds are not required.
Claims 9 requires cement
Claims 15 does not require cement
Cement as is known by those of ordinary skill in the art at the time of filing the invention comprises calcium silicate hydrates, alkali metals thereby meeting claim 15 for an additional compound
Rejections citing to: Dalrymple et al US 2006/0234871
Claim(s) 9, 2, 5-8, and 15 is/are rejected under 35 U.S.C. 102(a) as anticipated by Dalrymple et al (US 2006/0234871) as evidenced by Reddy et al US 2004/0182567 or, in the alternative, under 35 U.S.C. 103 as obvious over Dalrymple et al US 2006/0234871 further in view of Reddy et al US 2004/0182576
Regarding Claims 9, 2, 5-8 and 15
Dalrymple et al US 2006/0234871 teaches:
A cement composition comprising the additive [0141] (claim 20 reference) of a polysaccharide that has been oxidized (claim 11 reference) (meeting the limitations of claims 9 and 15)
The additive is a system comprising an oxidized polysaccharide [0078] the polysaccharide oxidizers include a wide variety such as hydrogen peroxide, alkali and alkaline earth and transition metal salts and combinations thereof [0081]
The oxidizers such as for starch include alkali, alkaline and transition metal salts and hydrogen peroxide [0085] (transition metals include iron and copper)(meeting claims 2 and 15)
A variety of oxidizers can be used to oxidize the starch, including oxidizers selected from the group consisting of alkali, alkaline earth and transition metal salts of, for example, periodate, hypochlorite, perbromate, chlorite, chlorate (pH 5.8 to 6.5), hydrogen peroxide (pH 3 to 6), peracetic acid (pH 2.8 to 3), soluble peroxide salts (pH 3 to 6), persulfate salts, percarboxylic acids, oxyhalo acids, and combination in any proportion thereof.[0085] (meeting the limitation of claims 9 and 15 for pH with overlapping ranges by virtue of the pH of the claimed oxidizers)
The selection of the oxidizer and the concentration of oxidizer should be sufficient to oxidize or degrade the chitosan-based polymer to a desired solubility. Oxidizing the chitosan-based polymer increases its solubility. By increasing solubility of the chitosan-based polymer, it can be used in higher concentration in fluids, thereby utilizing it as the base polymer in the fluids, rather than merely as a crosslinker.[0081]
The polysaccharides includes gum and others as well as starch including non-modified starches/natural starches such as corn starch potato starch etc. [0083-0084]
The polysaccharide includes chitosan [0089-0090] the system includes gel systems [0077][0086](meeting claim 6)
Alkali hydroxides are added[0053] [0070] Hydroxides are added [0053,0057,1325](meeting claim 9 for adding alkaline agent)
The composition is in cements such as hydraulic cement and Portland cement, with water etc. [0098] (meeting claims 9 and 8 for Cementous material and hydraulic cement)
The additive system includes silicate and nitrate salts of alkali and alkaline metals [0111] (meeting claims 8, 7, 15)
Oxidizers may be used in any combination or proportion: Alkaline earth metals may be used [0085] Alkaline earth metals and combinations may be added to the composition after oxidation [0111] meeting claim 15 and 9 for addition of alkali/alkaline after reaction of oxidation)
A variety of oxidizers can be used to oxidize the starch, including oxidizers selected from the group consisting of alkali, alkaline earth and transition metal salts of, for example, periodate, hypochlorite, perbromate, chlorite, chlorate (pH 5.8 to 6.5), hydrogen peroxide (pH 3 to 6), peracetic acid (pH 2.8 to 3), soluble peroxide salts (pH 3 to 6), persulfate salts, percarboxylic acids, oxyhalo acids, and combination in any proportion thereof.[0085]
In an embodiment, the sealant composition includes a gel system comprising an acrylamide polymer and a crosslinking agent. The acrylamide polymer may be either polyacrylamide or partially hydrolyzed polyacrylamide, depending on the number of carboxylate groups it has. An acrylamide polymer having substantially less than 1% of the acrylamide groups in the form of carboxylate groups is termed polyacrylamide (PA); an acrylamide polymer having at least 1% but not 100% of the acrylamide groups in the form of carboxylate groups is termed partially hydrolyzed polyacrylamide (PHPA). The average molecular weight of the acrylamide polymer may be in the range of about 10,000 to about 50,000,000 and preferably about 100,000 to about 20,000,000, and most preferably about 200,000 to about 12,000,000.[0117]
Dalrymple discloses the oxidizing of the polysaccharide polymer is taught in Reddy et al US 2004/0182576 US 2004/0182576 which is incorporated into Dalrymple [0086]
Reddy teaches oxidizing polysaccharide polymers such as starch and teaches the oxidation is controlled by the amount of oxidizer added the duration of the oxidation process and the temperature of the reaction. The amount of oxidizing agent can be adjusted to 1 to 25 % of glucose units of the polysaccharide polymer undergoes oxidation. Oxidizers include alkali alkaline earth and transition metal salts periodate, hypochlorite, hydrogen peroxide etc. [0023]
Reddy teaches gel times are controlled by degree of oxidation as well as the pH and temperature [0028] for example:
PNG
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428
524
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Greyscale
(i.e. 175° F = 79.99°C)
Reddy teaches oxidizing polysaccharide polymers such as starch and teaches the oxidation is controlled by the amount of oxidizer added the duration of the oxidation process and the temperature of the reaction. The amount of oxidizing agent can be adjusted to 1 to 25 % of glucose units of the polysaccharide polymer undergoes oxidation. Oxidizers include alkali alkaline earth and transition metal salts periodate, hypochlorite, hydrogen peroxide etc. [0023]
Reddy teaches gel times are controlled by degree of oxidation as well as the pH and temperature [0028] for example:
PNG
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428
524
media_image1.png
Greyscale
(i.e. 175° F = 79.99°C)
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644
498
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Greyscale
(160°F=71°C)
Thereby meeting the clamed temperature and pH for oxidation.
The selection of the oxidizer and the concentration of oxidizer should be sufficient to oxidize or degrade the chitosan-based polymer to a desired solubility. Oxidizing the chitosan-based polymer increases its solubility. Without being limited by the theoretical explanation, the oxidation of the chitosan-based polymer divides the polymer into shorter chain segments, thus increasing its solubility. Increased solubility of the chitosan-based polymer may also be explained by the introduction of carboxyl groups. By increasing solubility of the chitosan-based polymer, it can be used in higher concentration in fluids, thereby utilizing it as the base polymer in the fluids. [0019]
The oxidizers may include hydrogen peroxide, peracetic acid and mixtures as well as other oxidizers such as alkaline earth and alkali metal salts and transition metal salts and combinations thereof (i.e. this would include iron and copper which are transition metals rendering obvious claim 2) [0019]
PNG
media_image2.png
644
498
media_image2.png
Greyscale
(160°F=71°C)
Thereby meeting the clamed temperature and pH for oxidation.
Since the teachings of Reddy et al US 2004/0182567 are incorporated into Dalrymple the pH, temperature and time of the oxidation reactions are all taught.
Assuming arguendo the teachings of Dalrymple are not incorporated,
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to utilize the oxidation conditions set forth in US 2004/0182576 in the producing the oxidized polysaccharide of Dalrymple as Dalyrmple expressly incorporates the teachings of Reddy et al US 2004/0182567.
Regarding Product Claim 15
Since the prior art teaches the claimed oxidized polysaccharide made the claimed oxidative agent used for the same purpose in cement, the product will yield at least some of the same product as that of claims.
Since the polysaccharide oxidated product is added to cement one of ordinary skill in the art could ascertain an effective amount to achieve a desired effect with a reasonable expectation of success. Absent evidence of criticality the ranges are obvious.
The composition comprises cement, sand, silica, flour, gilsonite graphite granular materials etc. (claim 20 of reference) and may comprise an additive of a carboxylic acid anhydride (see claim 12 reference) sodium silicate,[0134] tetra ethylene glycol [0052] polypropylene glycol acrylates [0063-64] nitrate salts of alkali and alkaline earth metals as part of a gel system [0111]
Rejections citing to: WO 2016/160740A1 Paullin et al
Claim(s) 15 is/are rejected under 35 U.S.C. 102(a) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO 2016/160740A1 Paullin et al
Claim(s) 9, 2, and 5-8 is/are rejected under 35 U.S.C. 103 as obvious over WO 2016/160740A1 Paullin et al
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as obvious over WO 2016/160740A1 Paullin et al as applied to claims 9, 2, and 5-8 further in view of Dalrymple et al US 2006/0234871
WO 2016/160740A1 Paullin et al discloses an oxidized soy polysaccharide formed with a peroxide compound (Abstract) (P2 L20-30 – subjecting a base polysaccharide to oxidative treatment of claims et seq and oxidative degrading conditions of claims)
The oxidized polysaccharide is used in mortar, cement plaster, cement stucco (P35 last 10 lines) (meeting the limitation for cement and a cementous composition of the claims including but not limited the intended use as well as claims limitations for Cementous composition and claim 9 for comprising cement, and hydraulic cement etc. and where one of skill in the art knows that cement, plaster stucco and mortar comprise various calcium silicates)
Oxidation is performed with peroxide(P 8 L7-12) in an aqueous conditions which may be acidic or basic and which may be alkaline (P 9L3-8 and 12-19) Oxidation is performed with oxidation agents including Cu(II) (P16 L18-25) and Fe(II) (P27 L13-20)(meeting claim 2) This is in an amount of about 0.1 to 10 wt.% (P27 L25-3) (overlapping claim 5) oxidizing agents include halites such as sodium chlorite, hyphalite such as sodium hypochlorite etc. (P16 L11-26A)
The oxidation reaction may take 0.5 to 72 hours about 48 hours (P64 L3-10)
Conditions for oxidizing the polysaccharide include those of US 6610884 and US 6670470 using peroxide at range of 1-10 wt.% (P64 L23-28) at 80-150 C for 5-240 minutes or about 60 minutes (P65 L1-14) (claims 3-4meeting the time and overlapping the temperature of 50-95°C)
Oxidizing can occur at 18-40° C for 24-72 hours with periodate (P 64 L1-8) and may occur with elevated pressure in addition to elevated temperature (P65 L1-12) In other examples oxidation occurs at pH of 4-5 for 48-96 hours at room temperature 18-40° C (P66 L9-15) and in other examples under aqueous conditions for 0.5 to 5 hours at 18-40 °C (P66 L15-28) In another example the oxidation occurs for 0.5 or 1 or 4 or 8 hours, etc. such as 0.5 to 5 hours (P67 L2-11( at temperatures of 18-40 °C (P67 L11-20)
Reactions times can be optimized for example when peroxide is used (See fig 3 and fig 4) and can optimize the average molar mass (See fig 3)
As above set forth a variety of reaction temperatures, pH, oxidants, times can be combined for oxidation. And the choice of oxidant also contributes to the reaction times. As such one of ordinary skill in the art at the time of filing the invention could ascertain the appropriate combination of oxidant, pH, time and temperature for the oxidizing reaction to be optimized. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
The reaction may be neutralized with alkaline hydroxide such as sodium hydroxide (P67 L25-30)(claim 6)
The polysaccharide may be pretreated and may be used in any form dry or wet or other suitable form (P68 L26-P69 L12)
(P77 Example 5) polysaccharide with water solids of 0.1 to 10 % adding hydrogen peroxide etc. autoclaved 80-150°C See Fig 3 for time and yield
The oxidation method can be acidic of pH of 5.5 or less such as 2, 2.5, 3, 3.5, 4, 4.5 5 (P63 L15-22)
Paulin discloses the composition provides one or more of the following properties: thickening, freeze thaw stability lubricity, moisture retention and release texture, consistency, shape retention, binding, gelation, reduced mineral hardness and may be used in any weight percentages provided above (P36 L10-20) such as 0.01-10 wt.% (P35 L25-30 overlapping the claimed range)
The average molecular weight of oxidized soy polysaccharides can be 1000-100000 or smaller sized compound can be produced with increasing levels of oxidizing agent such as peroxide and vice versa (P 26 4-12 and Fig 3)
Regarding Claim 15:
Because Paullin teaches an oxidized polysaccharide and the instant claims do not recite structure the oxidized polysaccharide having been formed with the instantly claimed hydrogen peroxide and iron (II)/Cu(II) salts at temperatures which overlap (instant claim 3) and time which meets the instantly claimed time, will necessarily form at least some product which meets the limitations of claim 15 esp. where no structure has been claimed for the product and where the amount of the oxidized polysaccharide in the cement may be ascertained by one of ordinary skill in the art at the time of filing the invention to use the amounts taught by Paullin in cement materials to provide the desired physical property improvements taught therein.
The composition comprises salts of iron II or III, and salts of nitrates and nitrites in examples of compositions. The oxidized polysaccharide is used in mortar, cement plaster, cement stucco (P35 last 10 lines) (meeting the limitation for cement and a cementous composition of the claims including but not limited the intended use as well as claims limitations for Cementous composition and claim 9 for comprising cement, etc. and where one of skill in the art knows that cement, plaster stucco and mortar comprise various calcium silicates)(rending obvious to try by one of ordinary skill in the art at the time of filing the invention a hydraulic cement one of the most common)
(In addition Paullin teaches examples where the composition comprises glycols and glycol derivatives (See hair care) – etc.pp34-35 since claim 15 does not recite cement as a required compositional component the various examples in Paullin meet the limitations of claim 15.)
Alternatively Regarding Claim 8: assuming hydraulic cement would not be obvious to try given the broad teachings of Paullin
Dalrymple et al US 2006/0234871 teaches a composition and method similar to that of Paullin of oxidized polysaccharides for use in various cement products including cement mortar, etc.:
A cement composition comprising the additive [0141] (claim 20 reference) of a polysaccharide that has been oxidized (claim 11 reference) (meeting the limitations of claims 9 and 15)
The additive is a system comprising an oxidized polysaccharide [0078] the polysaccharide oxidizers include a wide variety such as hydrogen peroxide, alkali and alkaline earth and transition metal salts and combinations thereof [0081]
The oxidizers such as for starch include alkali, alkaline and transition metal salts and hydrogen peroxide [0085] (transition metals include iron and copper)(meeting claims 2 and 15)
A variety of oxidizers can be used to oxidize the starch, including oxidizers selected from the group consisting of alkali, alkaline earth and transition metal salts of, for example, periodate, hypochlorite, perbromate, chlorite, chlorate (pH 5.8 to 6.5), hydrogen peroxide (pH 3 to 6), peracetic acid (pH 2.8 to 3), soluble peroxide salts (pH 3 to 6), persulfate salts, percarboxylic acids, oxyhalo acids, and combination in any proportion thereof.[0085] (meeting the limitation of claims 9 and 15 for pH with overlapping ranges by virtue of the pH of the claimed oxidizers)
The selection of the oxidizer and the concentration of oxidizer should be sufficient to oxidize or degrade the chitosan-based polymer to a desired solubility. Oxidizing the chitosan-based polymer increases its solubility. By increasing solubility of the chitosan-based polymer, it can be used in higher concentration in fluids, thereby utilizing it as the base polymer in the fluids, rather than merely as a crosslinker.[0081]
The polysaccharides includes gum and others as well as starch including non-modified starches/natural starches such as corn starch potato starch etc. [0083-0084]
The polysaccharide includes chitosan [0089-0090] the system includes gel systems [0077][0086](meeting claim 6)
Alkali hydroxides are added[0053] [0070] Hydroxides are added [0053,0057,1325](meeting claim 9 for adding alkaline agent)
The composition is in cements such as hydraulic cement and Portland cement, with water etc. [0098] (meeting claims 9 and 8 for Cementous material and hydraulic cement)
The additive system includes silicate and nitrate salts of alkali and alkaline metals [0111] (meeting claims 8, 7, 15)
Oxidizers may be used in any combination or proportion: Alkaline earth metals may be used [0085] Alkaline earth metals and combinations may be added to the composition after oxidation [0111] meeting claim 15 and 9 for addition of alkali/alkaline after reaction of oxidation)
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to use a hydraulic cement in Paullin as taught by Dalrymple et al as it is a type of cement to which oxidized polysaccharides may be added to improve the properties thereof with a reasonable expectation of success.
Rejections citing to: Rodriques et al (US Patent No. 8,039,428 B2).
Claim 15 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Rodriques et al (US Patent No. 8,039,428 B2).
And
Claims 9, 2, and 5-8 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Rodriques et al (US Patent No. 8,039,428 B2).
Rodrigues et al (US 8,039,428) discloses a polysaccharides used in oil field applications (Abstract) The polysaccharide are oxidized with an oxidant and may be an unmodified starch (C7 L4-20) or a gum (C7 L42-50) and may be unmodified or modified starch (C7L30-40 meeting claims)
The oxidant can be any material capable of converting nitroxyl radicals to the ox ammonium salt including alkali or alkaline earth metal hypochlorite salts (C9 L606-65 – meeting claims for a further compound of an alkali alkaline earth metal halide)
The polysaccharides that are oxidized include starch (C7 L3-14) and includes unmodified starch (C7 L17-30)(meeting claims)
The composition/ process comprises NaOH (sodium hydroxide (C17 L1-30 meeting claim 7 for alkaline hydroxide)
The oxidant includes hydrogen peroxide (C10 L4-15 i.e. claim 2)
The oxidant can be used in an mount having an equivalent oxidizing power of up to 106.37 g active chlorine per mole polysaccharide (C10 L27-40)
Rodrigues teaches the additive in a cement composition with water (See example 20 of reference C27 L30-65 (meeting claims for adding to cement water)
The oxidized polysaccharides may be processed in a variety ways including at 40-100° C at 10 minutes to 5 hours (C12 L18-34)
(meeting claim for cementous composition and composition for cementious compositions, meeting limitation for for alkaline agent, claim 9 for an alkaline agent and cementous composition comprising cement, adding oxidatively degraded polysaccharide to a composition comprising cement, and for adding alkaline agent)
oxidizing at 5-50C and pH of about 6 to 11 (see claim 10 reference overlapping claimed ranges)
The oxidant used in this invention can be any material capable of converting nitroxyl radicals to their corresponding oxoammonium salt. These include the alkali or alkaline-earth metal hypohalite salts such as sodium hypochlorite, lithium hypochlorite, potassium hypochlorite and calcium hypochlorite. An alkali or alkaline-earth metal hypobromite salt can also be used. It can be added in the form of the hypobromite salt itself (e.g., sodium hypobromite), or it can be formed in situ from the addition of a suitable oxidant such as sodium hypochlorite and an alkali or alkaline-earth metal bromide salt. (C9 L62-C10 L5)
Additional useful oxidants method include alkali or alkaline-earth metal chlorites or bromites such as sodium chlorite or sodium bromite, hydrogen peroxide in combination with a transition metal catalyst such as methyl trioxorhenium (VII); hydrogen peroxide in combination with an enzyme; oxygen in combination with a transition metal catalyst; oxygen in combination with an enzyme; peroxyacids such as peracetic acid and 3-chloroperoxybenzoic acid; alkali or alkaline-earth metal salts of persulfates such as potassium persulfate and sodium persulfate; alkali or alkaline-earth metal salts of peroxyaminonosulfates such as potassium peroxymonosulfate; chloramines such as 1,3,5-trichloro-1,3,5-triazine-2,4,6(1H,3H,5H)trione, 1,3-dichloro-1,3,5-triazine-2,4,6(1H,3H,5H)trione sodium salt, 1,3-dichloro-5,5-dimethylhydantoin, 1-bromo-3-chloro-5,5-dimethylhydantoin, and 1-chloro-2,5-pyrrolidinedione; and alkali or alkaline-earth metal salts of ferricyanide. This list of oxidants is only illustrative and is not intended to be exhaustive. Several oxidants can be used in combination at once or sequentially. The oxidants can be used alone or in combination with an alkali or alkaline-earth metal bromide salt. In one aspect the oxidant is sodium hypochlorite or sodium hypobromite formed from the addition of sodium hypochlorite and sodium bromide. (C10 L5-30)
Regarding the amounts, as above set forth one of ordinary skill in the art at the time of filing the invention can identify effective amounts to add to cement with a reasonable expectation of success.
The reference teaches transition metal catalysts which include copper and iron does not expressly recite hydrogen peroxide with copper (II) salt or iron (II salt) it teaches other salts and teaches hydrogen peroxide The art teaches oxidized polysaccharide. The reference teaches the process with ranges which overlap and encompass the temperature and time for reaction of the instant claims
The reference teaches, in the claims, a process for preparing a polysaccharide composition comprising oxidizing a polysaccharide in an aqueous medium the aqueous medium having an oxidant and a mediating amount of nitroxyl radical and degrading the oxidized polysaccharide under alkaline conditions. This results in an oxidized degraded polysaccharide. Example 20 teaches a cement composition which comprises an oxidized degraded starch.
The instant claims are met by the reference.
The reference teaches the addition of an oxidatively degraded starch material to a cement composition. As the polysaccharide material is the same it would inherently function as a water reducing agent.
Example 20 of the reference teaches the formation of an oxidatively degraded starch and its addition to a cement composition.
The reference teaches the formation of an oxidatively degraded polysaccharide such as starch.
The reference teaches, in examples 1-3 (which example 7 and ultimately example 20 refer to) teaches corn starch.
The reference teaches the addition of an oxidatively degraded starch to a cement composition. As the polysaccharide material is the same it would function as a water reducing agent.
Example 20 teaches water and cement.
The reference teaches the formation of an oxidatively degraded polysaccharide such as starch which is added to a cement therefore it is considered an admixture for cement.
The reference teaches that the starch may be a native starch or modified starch (see column 7, lines 30+).
Modified polysaccharide polymers for use as anti-sealant and dispersant. The polymers are useful in compositions used in aqueous systems. The modified polysaccharides are also useful in detergent formulations, water treatment, dispersants and oilfield applications and as fiberglass binders. Such applications include a modified polysaccharide having up to about 70 mole % carboxyl groups per mole of polysaccharide ASU and up to about 20 mole % aldehyde groups per mole of polysaccharide ASU
The reference teaches that the material may be added to a cement composition and it is known to add various other materials as admixtures to cement compositions in order to modify the result cement material’s properties. Note that the materials recited in the instant claim act as retarders, accelerators, etc. and these are known materials utilized in cement admixtures. Accordingly the formulation of an admixture comprising additional components is obvious.
Regarding Product Claim 15
Since the prior art teaches the claimed oxidized polysaccharide made the claimed oxidative agent used for the same purpose in cement, the product will yield at least some of the same product as that of claims. The composition comprises the materials above set forth.
The composition may comprise hydraulic cement Lone Star Class H (See example 20 and Portland cement and super plasticizers and additives including retarders, air entrainers accelerators, water proofer, pigment, corrosion inhibitors, etc. at example 28– i.e. Portland cement comprises calcium silicate hydrate)
Since the polysaccharide oxidated product is added to cement one of ordinary skill in the art could ascertain an effective amount to achieve a desired effect with a reasonable expectation of success. Absent evidence of criticality the ranges are obvious.
(in examples such as example 21 a glycol ether is included – claim 15 does not recite cement as such this example also meets claim 15)
Rejections citing to Great Britain Patent Specification No. Granville Whitaker et al GB 1425822
Claims 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Great Britain Patent Specification No. Granville Whitaker et al GB 1425822
AND
Claim(s) 9, 2, 5-8 s/are rejected under 35 U.S.C. 103 as obvious over Granville Whitaker et al GB 1425822
Granville Whitaker et al GB 1425822 discloses a cement composition including an oxidized polysaccharide (C1 L10-20) The oxidized polysaccharide are treated with oxidizing agents such as peroxides, calcium carbonate and mixtures and the reaction is performed with heat follow with neutralization with an alkali metal hydroxide (C1 L30-c1L45-50)
The solutions tend to be acidic and can be used with followed neutralization with an alkali metal hydroxide (P1 C1 last par through C2 first par) (overlapping the claimed acidic pH followed by neutralization with alkali/alkaline)
Suitable polysaccharides include starch (C2 L48-55)
Wheat starch (unmodified starch) is oxidized with sodium hypochlorite in water and then treated with caustic soda at 20°C and stopped with the oxidizing agent was used up (See examples IX and X page 2) (i.e. concentration, time and temperature can be optimized by one of ordinary skill in the art at the time of filing the invention to use all the reactants until conclusion of the reaction i.e. the reactants are used up)
The reference teaches, in the examples (I-IV), a maltodextrin, starch, dextrin and farina dextrin which is oxidatively degraded using hydrogen peroxide together with a sodium hydroxide solution. Examples V to VIII add the materials produced in examples V to VIII to cement or concrete. Page 1, lines 28-32, teach that the oxidized polysaccharide derivatives reduce the water requirement for a given concrete. Examples IX and X teach a wheat starch which is oxidatively degraded using sodium hypochlorite and caustic soda. The oxidized polysaccharide is added at an amount of 86 ml/50 Kg cement.
The reference teaches a cement composition comprising an oxidatively degraded polysaccharide which is added to a cement or concrete composition. The material functions as a water reducer. The reference teaches sodium hydroxide or caustic soda.
The amount recited in Examples IX and X, when converted falls within the claimed range.
This method is taught by the examples. Examples (I-IV), a maltodextrin, starch, dextrin and farina dextrin which is oxidatively degraded using hydrogen peroxide together with a sodium hydroxide solution. Maltodextrin is believed to be an example of a modified starch.
In the examples (I-IV), a maltodextrin, starch, dextrin and farina dextrin which is oxidatively degraded using hydrogen peroxide together with a sodium hydroxide solution. The composition functions as a water reducing agent.
The reference teaches its addition to water and cement.
As for claim 15, the reference teaches, in the examples (I-IV), a maltodextrin, starch, dextrin and farina dextrin which is oxidatively degraded using hydrogen peroxide together with a sodium hydroxide solution. The composition is added to cement or concrete and therefore is considered an admixture.
The reference teaches, on page 1, lines 49-53, that examples of suitable polysaccharide materials include pregelatinized derivatives.(meeting claim 6)
The material may be added to a cement composition along with triethanolamine (last page first col)
The composition includes Portland Cement (P1 C2 L55-60)(Portland cement is a type of hydraulic cement)
Response to Arguments
Applicant's arguments filed 9/5/2025 have been fully considered but they are not persuasive.
Regarding Paullin the applicant argues the reference does not teach the claimed temperatures. This is not persuasive. Paullin provides a variety of examples as more fully above set forth some of which overlap the instantly claimed temperature. Furthermore, Paullin As above set forth a variety of reaction temperatures, pH, oxidants, times can be combined for oxidation. Paullin teaches the choice of oxidant also contributes to the reaction times. As such one of ordinary skill in the art at the time of filing the invention could ascertain the appropriate combination of oxidant, pH, time and temperature for the oxidizing reaction to be optimized. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding Dalrymple: The applicant argues the reference does not teach the reaction conditions. Amended grounds of rejection are above set forth wherein Dalrymple incorporates Reddy et al US 2004/0182576 which teaches the instantly claimed conditions etc.
Regarding Rodrigues: The applicant argues the reference does not teach the claimed pH or temperature. This is not persuasive as more fully above set forth The oxidized polysaccharides may be processed in a variety ways including at 40-100° C at 10 minutes to 5 hours (C12 L18-34) oxidizing at 5-50C and pH of about 6 to 11 (see claim 10 reference overlapping claimed ranges)
Regarding Reddy: This rejection has been withdrawn at this time.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., high number or carboxylate groups and suitable molecular weight) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant indicates the process provides a “suitable molecular weight” The molecular weight is not claimed. Some of the references do recite molecular weight ranges applicant has not distinguished the claims or indicated how the “suitable” molecular weight differs.
Applicant argues the process results in formation of a high number of carboxylate groups No number of carboxylate groups has been claimed. Nonetheless the prior art above indicates the carboxylate group formation can be controlled by controlling the variables in the reactions (see above rejections). Applicant has not distinguished the claims for “high number” of carboxylate groups from the teachings of the above references.
The examiner maintains a prima facie showing of obviousness has been established by a preponderance of the evidence.
Applicant has not provided data or a full explanation in support of the statement the method provides unexpected advantages esp. where the prior art already recognizing controlling carbon chain length and number of carboxylate groups with adjustment of the reactants and conditions (i.e. the argued properties are not unexpected) nor does applicant provide data commensurate in scope with the claimed invention (no ranges or proportions of reactants, any polysaccharide in any state, any oxidative conditions or oxidant in any amount or combination, etc.). No data is presented to support criticality of the ranges commensurate with same.
Unexpected and superior results/secondary considerations do not overcome rejections under section 102 (i.e. claim 15) and applicant has not established the product of the prior art does not encompass the claimed product which remains undefined.
See for example Reddy (US 2004/0182576) the oxidation of the chitosan-based polymer divides the polymer into shorter chain segments, thus increasing its solubility. Increased solubility of the chitosan-based polymer may also be explained by the introduction of carboxyl groups "Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967)
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992)
The rejections as above set forth are made final.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892 accompanying this office action. For example:
Reddy (WO 2008/145975A) discloses a composition comprises a carboxylated sulfonate polysaccharide (Abstract) The polysaccharide is treated with an oxidizing agent to form an oxidized polysaccharide (carboxylated polysaccharide) [0010] The polysaccharide comprises starch [0019] [0044-0045 table 1 unmodified starch)(no modification recited meeting claim 10) The composition is used in cements [0005] [0012] The composition is added to cement [0038] The polysaccharide is prepared with an oxidizing agent [0024] Suitable oxidizing agents include hydrogen peroxide and salts [0024] The oxidized polysaccharide is added 0.1 to 4 wt.% to cement (Claim 15 of reference)
EP 1743906A2 discloses polysaccharides are oxidized and used in cement compositions (See claim 15 reference) The polysaccharides are oxidized in an aqueous medium with an oxidizing agent under controlled temperature and pH (See claim 16 reference)
Ahlgren et al (US Patent No. 9,410,289 B2)
Claims 10-11 and 15: The reference teaches, in example 1, an oxidatively degraded potato starch. It is dissolved by eating and iron sulfate and hydrogen peroxide are added and after 15 minutes the starch degradation is complete.
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