DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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.
2. Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Adachi et al (US 7,282,262) in view of Fujimura et al (US 2011/0301560), Lee et al (US 2016/0354757, Lee’757) and Lee et al (US 2018/0037686, Lee’686).
3. Adachi et al discloses particulate water absorbent resin having particle size of 106-850 micron, comprising a cross-linked structure and containing 0.001-10%wt of an organic multivalent metal salt (col. 4, lines 10-23).
4. The process for making said absorbent particles comprises:
1) polymerization of a partly neutralized acrylic acid (col. 7, lines 30-32), and internal cross-linking agent (col. 8, lines 32-50; col. 9, lines 47-65) to prepare a crosslinked a water-containing gel (col. 10, lines 40-45), i.e. a hydrogel;
2) drying and pulverizing the water-containing gel to form the water-absorbent resin particles (col. 10, lines 45-50; col. 11, lines 45-50);
3) subjecting the water-absorbent resin particles to surface cross-linking using surface cross-linking agents (col. 11, lines 45-60; col. 6, lines 59-61),
wherein the organic multivalent organic acid salt, specifically calcium stearate, magnesium stearate having a particle diameter of 0.01-50 micron (col. 15, lines 25-30, 59-67, as to instant claims 4-7, 13, 15-16) is dispersed in the monomer solution containing the internal cross-linking agent which is used to polymerize the monomer (col. 17, lines 30-39).
5. As to instant claim 14, the acrylic acid is used in amount of 10-70%wt, or 20-60%wt based on the weight of the aqueous monomer solution (col. 9, lines 59-65), specifically exemplified 38%wt (col. 34, lines 15-20).
6. Given the calcium stearate or magnesium stearate are added to the monomer solution in step 1), therefore, the process of polymerization of the acrylic acid and the internal cross-linking will intrinsically and necessarily be conducted in the presence of said calcium stearate or magnesium stearate (as to instant claim 7). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
7. The produced particulate water absorbent is in the form of primary spherical particles (col. 21, lines 64-67), has particle size of 106-850 micron (col. 19, lines 60-62); absorbency under pressure of greater than 25 g/g (col. 20, lines 35-40, as to instant claim 2).
8. Given the particles are in the form of primary spherical particles, therefore, the average aspect ratio of said particles would be reasonably expected to be about 1, and in any case 0.75 or more (as to instant claims 1 and 7). 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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
9. Adachi et al further discloses the water-absorbent resin comprising a foaming agent (col. 19, lines 40-43).
10. Though Adachi et al recites the calcium stearate or magnesium stearate being dispersed in the monomer solution containing the internal cross-linking agent, which is used to polymerize the monomer, Adachi et al does not explicitly teach addition of said calcium stearate or magnesium stearate into the monomer solution in the form of a water dispersion.
11. However, Fujimura et al discloses crosslinked absorbent particles and a process for their production, the process comprising:
obtaining a hydrogel of a crosslinked polymer by polymerizing a water-soluble vinyl monomer, specifically (meth)acrylic acid salt ([0031]) and an internal crosslinking agent in the presence of a hydrophobic substance C) ([0019]), followed by drying and pulverizing the hydrogel ([0044]]-[0050]) to prepare the particles having size of 250-600 micron or 300-500 micron ([0051]). The particles are further subjected to surface crosslinking ([0056]).
12. The hydrophobic substance C) is a long-chain fatty acid salt, specifically calcium stearate or magnesium stearate ([0068], [0102]), which may further used in combination with a long-chain fatty ester, specifically glycerol monostearate or glycerol monolaurate ([0061], [0067]). Based on the teachings of Fujimura et al, it would have been obvious to a one of ordinary skill in the art to choose use the combination of calcium stearate (or magnesium stearate) with a minor amount of glycerol monostearate or glycerol monolaurate as the hydrophobic substance C), since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
13. It is further noted that instant specification recites the glycerol monostearate and glycerol monolaurate as the nonionic surfactant used in combination with calcium stearate to form the water dispersion (see p. 36, lines 20-24 of instant specification).
The hydrophobic substance is dissolved or emulsified in water and further dispersed in the polymerization solution ([0117]). The dispersion comprises 10-400% by weight of water based on the weight of the hydrophobic substance C) ([0119], as to instant claim 17). Therefore, the glycerol monostearate or glycerol monolaurate used in a minor amount along with the major amount of amount of said calcium stearate or magnesium stearate will intrinsically and necessarily act as a nonionic surfactant as well (as to instant claims 11 and 12).
14. Further, in the view of skin irritation resistance and leakage resistance of the absorbent article, the hydrophobic substance C) is present in the inside of the absorbent particle in amount of 0.01-10%wt, preferably 0.01-5%wt of the crosslinked polymer ([0104]). The particle diameter of the hydrophobic substance is 0.5-30 micron ([0110]).
Specific example 12 shows the use of 155 pbw of the vinyl monomer and 1.55 pbw of calcium stearate ([0176]), i.e. 1 pbw per 100 pbw of the monomer (as to instant claim 8).
15. Since both Fujimura et al and Adachi et al are related to water absorbent particles, produced by polymerization of neutralized (meth)acrylic acid in the presence of internal cross-linking agent and hydrophobic substance like calcium stearate or magnesium stearate, followed by drying, pulverizing and surface cross-linking of said particle, and thereby belong to the same field of endeavor, wherein Fujimura et al specifically teaches the addition of said hydrophobic substance into the monomer solution taking place in the form of dispersion/emulsion in water during polymerization, so to ensure the presence of said hydrophobic substance inside the particles and thus to improve skin irritation resistance and leakage resistance, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Fujimura et al and Adachi et al, and introduce, or obvious to try to introduce in the process of Adachi et al the water emulsion/dispersion of the hydrophobic substances, including calcium stearate or magnesium stearate with a minor amount of glycerol monostearate or glycerol monolaurate, in the monomer composition for polymerization, i.e. conduct polymerization of said acrylic acid monomer in the presence of the hydrophobic substance dispersion, as taught by Fujimura et al , so to ensure the produced particles of Adachi et al have said hydrophobic substance inside said particles and have improved skin irritation resistance and leakage resistance as well, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). The key to supporting any rejection under 35 US 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
16. Though Adachi et al discloses the water-absorbent particles comprising a foaming agent, Adachi et al does not explicitly teach said foaming agent being carbonate-based and added to the monomer solution for polymerization.
17. However,
1) Lee’757 discloses a superabsorbent polymer and a preparation method thereof, wherein the method comprises:
a) polymerizing at least partially neutralized acrylic acid in the presence of a first crosslinking agent and a foaming agent including sodium bicarbonate, sodium carbonate or calcium carbonate ([0045], [0054]) to form a water-containing gel polymer;
b) pulverizing and drying the water-containing gel ([0046]-[0048]) and
c) surface-modifying the polymer by a second crosslinking agent ([0049]),
wherein the produced superabsorbent polymer has both micropores with diameter 5-100 micron and macropores with diameter of 100-400 micron ([0056]; [0016], as to instant claims 3, 9); CRC of 29.5 g/g or more and AUL of 18 g/g or more ([0013]).
The presence of pores with different sizes increases absorption rate under a load ([0015]).
Specifically, Example 1 shows the use of 2 g of sodium bicarbonate per 500 g of acrylic acid, i.e. 0.4 pbw per 100 pbw of acrylic acid ([0097]-[0098], as to instant claim 18).
2) Lee’686 discloses the superabsorbent polymer produced by polymerization of the neutralized acrylic acid in the presence of carbonate-based foaming agent and colloidal hydrophobic substance like silica (as to instant claims 5, 15), followed by drying, pulverizing and surface cross-linking, wherein the producing superabsorbent polymer is having CRC of 29-35 g/g, absorbency under load of 0.9 psi of 21 g/g and vortex time of 30-50 seconds ([0021], Abstract).
18. Since addition of foaming agents, including carbonate-based, into the neutralized acrylic acid-based monomer composition for making absorbent polymers introduces a variety of pores into said polymer, thereby increasing absorption rate and forming said absorbent polymers as superabsorbent, as taught by Lee’757 and Lee’686, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Lee’757, Lee’686 and Adachi et al in view of Fujimura et al, and to introduce, or obvious to try to introduce the carbonate-based foaming agent into the monomer composition of the process of Adachi et al in view of Fujimura et al, so to conduct the polymerization of the step 1) of the process of Adachi et al in view of Fujimura et al in the presence of the carbonate-based foaming agent, and to introduce a plurality of pores in the absorbent particles of Adachi et al in view of Fujimura et al, thereby increasing absorption rate of said particles as well, making those absorbent particles superabsorbent, as taught by Lee’757 and Lee’686, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). The key to supporting any rejection under 35 US 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
19. Given in the process of Adachi et al in view of Fujimura et al, Lee’686 and Lee’757, calcium stearate is used in amount of 1 pbw per 100 pbw of the monomer (as to instant claim 8 of Fujimura et al) and the sodium bicarbonate is used in amount of 0.4 pbw per 100 pbw of acrylic acid ([0097]-[0098] of Lee et al), therefore, the weight ratio of the bicarbonate to the calcium stearate will be 0.4:1, or 1:2.5 (as to instant claim 10).
20. Since the superabsorbent particles of Adachi et al in view of Fujimura et al, Lee’757 and Lee’686 are substantially the same as those claimed in instant invention, and are produced by substantially the same process as those claimed in instant invention, including polymerization of neutralized acrylic acid with internal cross-linking agent in the presence of a carbonate-based foaming agent and emulsified water dispersion of calcium stearate, followed by drying, pulverizing and surface cross-linking, therefore, the superabsorbent particles of Adachi et al in view of Fujimura et al, Lee’757 and Lee’686 will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including aspect ratio, average value of convexity, vortex time, CRC and AUP under pressure of 0.7 psi, having the values the same as those claimed in instant invention, or values in the ranges overlapping with those as claimed in instant invention as well, especially since Adachi et al recites the particles in the form of primary spherical particles (col. 21, lines 64-67) and having absorbency under pressure of greater than 25 g/g (col. 20, lines 35-40); addition pores into the particles of Adachi et al in view of Fujimura et al, Lee’757 and Lee’686 will further increase absorbency of said particles, as taught by Lee’757 and Lee’686 as well, and as further taught by Lee’686, the superabsorbent particles produced by polymerization of the neutralized acrylic acid in the presence of carbonate-based foaming agent and colloidal hydrophobic substance like silica leads to producing superabsorbent polymer having CRC of 29-35 g/g, absorbency under load of 0.9 psi of 21 g/g and vortex time of 30-50 seconds ([0021], Abstract). 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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
21. Since the absorbency of the particles depends of the level of cross-linking, i.e. the amount of both used internal and surface cross-linking, the amount and type of used foaming agent, and thereby the amount and type of pores, therefore, it would have been obvious to and within the skills of a one of ordinary skill in the art to make variations and optimize by routine experimentation the amounts of used internal and surface cross-linking agents, controlling the level of cross-linking, and further the amount and type of used foaming agent, and thereby the amount and size of formed pores, so to produce the superabsorbent particles having a desired level of absorbency, and thereby desired level of CRC, AUP, vortex time, convexity, thus arriving at the present invention. "[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).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Obviousness Double Patenting Rejection I
22. Claims 1-18 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of a copending application 18/028,295 (published US 2024/0018321) in view of Lee et al (US 2016/0354757, Lee’757) and Lee et al (US 2018/0037686, Lee’686).
Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
23. The copending application 18/028,295 claims a method for preparing a super absorbent polymer, comprising the steps of:
step 1: preparing a monomer composition containing an acrylic acid-based monomer having at least partially neutralized acidic groups and an internal cross-linking agent (step 1);
step 2: preparing a hydrogel polymer by cross-linking polymerization of the monomer composition in the presence of an aqueous dispersion of hydrophobic particles and an encapsulated foaming agent (step 2), wherein in step 2, the cross-linking polymerization is performed in the presence of the aqueous dispersion of hydrophobic particles, the encapsulated foaming agent;
step 3: forming a powder-type base resin by drying and pulverizing the hydrogel polymer (step 3); and
step 4: forming a surface cross-linked layer by further cross-linking the surface of the powder-type base resin in the presence of a surface cross-linking agent (step 4), wherein the aqueous dispersion of hydrophobic particles is a colloidal solution in which hydrophobic particles are dispersed by a surfactant, specifically a nonionic surfactant and an anionic surfactant, the hydrophobic particles contain a metal salt of a C7 to C24 fatty acid, and the encapsulated foaming agent has a structure having a core comprising a hydrocarbon and a shell formed of a thermoplastic resin surrounding the core.
The super absorbent polymer satisfies the following 1) and 2): 1) a vortex time at 24.0 °C is 35 seconds or less; and 2) one-minute tap water absorbency, which is defined as a weight of water absorbed in the super absorbent polymer in 1 minute when 1 g of the super absorbent polymer is immersed in 2 L of tap water and swollen for 1 minute, is 115 g or more.
The hydrophobic particles are at least one metal salt of stearic acid selected from the group consisting of calcium stearate, magnesium stearate, sodium stearate, zinc stearate and potassium stearate, having an average particle diameter of 0.5 um to 20 um.
The hydrophobic particles are used in an amount of 0.005 to 0.4 parts by weight based on 100 parts by weight of the acrylic acid-based monomer.
The encapsulated foaming agent and the hydrophobic particles are used in a weight ratio of 1:0.1 to 1:3.5.
The acrylic acid-based monomer is included in an amount of about 20 to 60 wt% based on a total weight of the monomer composition.
The hydrophobic particles are included in an amount of 10 to 70 wt% based on a total weight of the aqueous dispersion.
The foaming agent is included in an amount of 0.005 to 1 part by weight based on 100 parts by weight of the acrylic acid-based monomer.
24. Though application 18/028,295 discloses the water-absorbent particles comprising a foaming agent, application 18/028,295 does not teach said foaming agent being carbonate-based.
25. However,
1) Lee’757 discloses a superabsorbent polymer and a preparation method thereof, wherein the method comprises:
a) polymerizing a t least partially neutralized acrylic acid in the presence of a first crosslinking agent and a foaming agent including sodium bicarbonate, sodium carbonate or calcium carbonate ([0045], [0054]) to form a water-containing gel polymer;
b) pulverizing and drying the water-containing gel ([0046]-[0048]) and
c) surface-modifying the polymer by a second crosslinking agent ([0049]),
wherein the produced superabsorbent polymer has both micropores with diameter 5-100 micron and macropores with diameter of 100-400 micron ([0056]; [0016], as to instant claims 3, 9); CRC of 29.5 g/g or more and AUL of 18 g/g or more ([0013]).
The presence of pores with different sizes increases absorption rate under a load ([0015]).
Specifically, Example 1 shows the use of 2 g of sodium bicarbonate per 500 g of acrylic acid, i.e. 0.4 pbw per 100 pbw of acrylic acid ([0097]-[0098], as to instant claim 18).
2) Lee’686 discloses the superabsorbent polymer produced by polymerization of the neutralized acrylic acid in the presence of carbonate-based foaming agent and colloidal hydrophobic substance like silica, followed by drying, pulverizing and surface cross-linking, wherein the producing superabsorbent polymer is having CRC of 29-35 g/g, absorbency under load of 0.9 psi of 21 g/g and vortex time of 30-50 seconds ([0021], Abstract).
26. Since addition of foaming agents including carbonate-based into the neutralized acrylic acid-based monomer composition for making absorbent polymers introduces a variety of pores into said polymer, thereby increasing absorption rate and forming said absorbent polymers as superabsorbent, as taught by Lee’757 and Lee’686, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Lee’757, Lee’686 and application 18/028,295, and to introduce, or obvious to try to introduce the carbonate-based foaming agent into the monomer composition of the process of application 18/028,295, so to conduct the polymerization in the process of application 18/028,295 in the presence of the carbonate-based foaming agent, so to introduce a plurality of pores in the absorbent particles of application 18/028,295, thereby further increasing absorption rate of said particles as well, making those absorbent particles superabsorbent, as taught by Lee’757 and Lee’686, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
27. Since the superabsorbent particles of application 18/028,295 in view of Lee’757 and Lee’686 are substantially the same as those claimed in instant invention, and are produced by substantially the same process as those claimed in instant invention, including polymerization of neutralized acrylic acid with internal cross-linking agent in the presence of a carbonate-based foaming agent and emulsified water dispersion of calcium stearate, followed by drying, pulverizing and surface cross-linking, therefore, the superabsorbent particles of application 18/028,295 in view of Lee’757 and Lee’686 will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including aspect ratio, average value of convexity, vortex time, CRC and AUP under pressure of 0.7 psi, having the values the same as those claimed in instant invention, or values in the ranges overlapping with those as claimed in instant invention as well. 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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
28. Therefore, the present claims are obvious variants of the limitations claimed in a copending application 18/028,295 (published US 2024/0018321) in view of Lee et al (US 2016/0354757, Lee’757) and Lee et al (US 2018/0037686, Lee’686).
29. Claims 1-18 are directed to an invention not patentably distinct from claims 1-20 of a copending application 18/028,295 (published US 2024/0018321) in view of Lee et al (US 2016/0354757, Lee’757) and Lee et al (US 2018/0037686, Lee’686).
Specifically, see the discussion in paragraphs 22-28 above.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of com-mon ownership (see MPEP Chapter 2300). The copending application 18/028,295, discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue, the assignee can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that the conflicting inventions were commonly owned at the time the invention in this application was made, or name the prior inventor of the conflicting subject matter.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications pending on or after December 10, 2004.
30. Claims 1-18 are rejected under 35 U.S.C. 103(a) as being obvious over published US 2024/0018321 in view of Lee et al (US 2016/0354757, Lee’757) and Lee et al (US 2018/0037686, Lee’686).
Specifically, see the discussion set forth in paragraphs 22-28 above.
The applied reference has a common assignee and a common inventor with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art only under 35 U.S.C. 102(e). This rejection under 35 U.S.C. 103(a) might be overcome by: (1) a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not an invention “by another”; (2) a showing of a date of invention for the claimed subject matter of the application which corresponds to subject matter disclosed but not claimed in the reference, prior to the effective U.S. filing date of the reference under 37 CFR 1.131; or (3) an oath or declaration under 37 CFR 1.130 stating that the application and reference are currently owned by the same party and that the inventor named in the application is the prior inventor under 35 U.S.C. 104, together with a terminal disclaimer in accordance with 37 CFR 1.321(c). This rejection might also be overcome by showing that the reference is disqualified under 35 U.S.C. 103(c) as prior art in a rejection under 35 U.S.C. 103(a). See MPEP § 706.02(l)(1) and § 706.02(l)(2).
Obviousness Double Patenting Rejection II
31. Claims 1-18 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-17 of a copending application 18/026,495 (published US 2023/0347317).
Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
32. The copending application 18/026,495 claims a method for preparing a super absorbent polymer, comprising the steps of:
step 1: preparing a monomer composition containing an acrylic acid-based monomer having at least partially neutralized acidic groups and an internal cross-linking agent (step 1);
step 2: preparing a hydrogel polymer by cross-linking polymerization of the monomer composition in the presence of an aqueous dispersion of hydrophobic particles and a carbonate-based foaming agent (step 2);
step 3: forming a powder-type base resin by drying and pulverizing the hydrogel polymer (step 3); and
step 4: preparing a super absorbent polymer after forming a surface cross-linked layer by further cross-linking the surface of the powder-type base resin in the presence of a surface cross- linking agent (step 4),
wherein the aqueous dispersion of hydrophobic particles is a colloidal solution in which hydrophobic particles are dispersed by a surfactant, the hydrophobic particles contain a metal salt of a C7 to C24 fatty acid, and the super absorbent polymer satisfies the following 1) and 2): 1) a vortex time at 24.0 °C is 40 seconds or less; and 2) one-minute tap water absorbency, which is defined as a weight of water absorbed in the super absorbent polymer in 1 minute when 1 g of the super absorbent polymer is immersed in 2 L of tap water and swollen for 1 minute, is 90 g or more.
The hydrophobic particles are at least one metal salt of stearic acid selected from the group consisting of calcium stearate, magnesium stearate, sodium stearate, zinc stearate and potassium stearate, having an average particle diameter of 0.5 micron to 20 micron.
The hydrophobic particles are used in an amount of 0.01 to 0.5 parts by weight based on 100 parts by weight of the acrylic acid-based monomer.
The surfactant comprises a nonionic surfactant and an anionic surfactant.
The carbonate-based foaming agent is at least one selected from the group consisting of sodium bicarbonate, sodium carbonate, potassium bicarbonate, potassium carbonate, calcium bicarbonate, calcium carbonate, magnesium bicarbonate and magnesium carbonate.
The carbonate-based foaming agent and the hydrophobic particles are used in a weight ratio of 1:0.1 to 1:1.
The acrylic acid-based monomer is included in an amount of about 20 to 60 wt% based on a total weight of the monomer composition.
The hydrophobic particles are included in an amount of 10 to 70 wt% based on a total weight of the aqueous dispersion.
The carbonate-based foaming agent is included in an amount of 0.005 to 1 part by weight based on 100 parts by weight of the acrylic acid-based monomer.
The particles having centrifuge retention capacity (CRC) measured according to EDANA WSP 241.3 of 30 to 35 g/g.
33. Since the superabsorbent particles of application 18/026,495 are substantially the same as those claimed in instant invention, and are produced by substantially the same process as those claimed in instant invention, including polymerization of neutralized acrylic acid with internal cross-linking agent in the presence of a carbonate-based foaming agent and emulsified water dispersion of calcium stearate, followed by drying, pulverizing and surface cross-linking, therefore, the superabsorbent particles of application 18/026,495 will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including aspect ratio, average value of convexity, and AUP under pressure of 0.7 psi, having the values the same as those claimed in instant invention, or values in the ranges overlapping with those as claimed in instant invention as well. 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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
34. Therefore, the present claims are obvious variants of the limitations claimed in a copending application 18/026,495.
35. Claims 1-18 are directed to an invention not patentably distinct from claims 1-17 of a copending application 18/026,495.
Specifically, see the discussion in paragraphs 31-34 above.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of com-mon ownership (see MPEP Chapter 2300). The copending application 18/026,495, discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue, the assignee can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that the conflicting inventions were commonly owned at the time the invention in this application was made, or name the prior inventor of the conflicting subject matter.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications pending on or after December 10, 2004.
36. Claims 1-18 are rejected under 35 U.S.C. 103(a) as being obvious over published US 2023/0347317.
Specifically, see the discussion set forth in paragraphs 31-34 above.
The applied reference has a common assignee and a common inventor with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art only under 35 U.S.C. 102(e). This rejection under 35 U.S.C. 103(a) might be overcome by: (1) a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not an invention “by another”; (2) a showing of a date of invention for the claimed subject matter of the application which corresponds to subject matter disclosed but not claimed in the reference, prior to the effective U.S. filing date of the reference under 37 CFR 1.131; or (3) an oath or declaration under 37 CFR 1.130 stating that the application and reference are currently owned by the same party and that the inventor named in the application is the prior inventor under 35 U.S.C. 104, together with a terminal disclaimer in accordance with 37 CFR 1.321(c). This rejection might also be overcome by showing that the reference is disqualified under 35 U.S.C. 103(c) as prior art in a rejection under 35 U.S.C. 103(a). See MPEP § 706.02(l)(1) and § 706.02(l)(2).
Obviousness Double Patenting Rejection III
37. Claims 1-18 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-15 of a copending application 18/027,439 (published US 2023/0331933).
Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
38. The copending application 18/027,439 claims a method for preparing a super absorbent polymer, comprising the steps of:
step 1: preparing a monomer composition containing an acrylic acid-based monomer having at least partially neutralized acidic groups and an internal cross-linking agent (step 1);
step 2: preparing a hydrogel polymer by cross-linking polymerization of the monomer composition in the presence of an aqueous dispersion of hydrophobic particles and a carbonate- based foaming agent (step 2);
step 3: forming a powder-type base resin by drying and pulverizing the hydrogel polymer (step 3); and
step 4: forming a surface cross-linked layer by further cross-linking the surface of the powder-type base resin in the presence of a surface cross-linking agent (step 4), wherein the aqueous dispersion of hydrophobic particles is a colloidal solution in which hydrophobic particles are dispersed by a surfactant, and the hydrophobic particles contain a metal salt of a C7 to C24 fatty acid, and have an average particle diameter of 1 micron to 100 micron.
The hydrophobic particles are at least one metal salt of stearic acid selected from the group consisting of calcium stearate, magnesium stearate, sodium stearate, zinc stearate and potassium stearate, having an average particle diameter of 1 um to 20 um.
The hydrophobic particles are used in an amount of 0.01 to 0.5 parts by weight based on 100 parts by weight of the acrylic acid-based monomer.
The carbonate-based foaming agent is at least one selected from the group consisting of sodium bicarbonate, sodium carbonate, potassium bicarbonate, potassium carbonate, calcium carbonate, calcium carbonate, magnesium bicarbonate and magnesium carbonate.
The carbonate-based foaming agent and the hydrophobic particles are used in a weight ratio of 1:0.1 to 1:2.
The surfactant comprises a nonionic surfactant and an anionic surfactant.
The super absorbent polymer has a vortex time at 24.0 °C of 55 seconds or less, centrifuge retention capacity (CRC) of 25 to 30 g/g, when measured according to the EDANA WSP 241.3, an absorbency under pressure (AUP) at 0.7 psi of 20 to 26 g/g, when measured according to the EDANA WSP 242.3.
The acrylic acid-based monomer is included in an amount of about 20 to 60 wt% based on a total weight of the monomer composition.
The hydrophobic particles are included in an amount of 10 to 70 wt% based on a total weight of the aqueous dispersion.
The carbonate-based foaming agent is included in an amount of 0.005 to 1 part by weight based on 100 parts by weight of the acrylic acid-based monomer.
39. Since the superabsorbent particles of application 18/027,439 are substantially the same as those claimed in instant invention, and are produced by substantially the same process as those claimed in instant invention, including polymerization of neutralized acrylic acid with internal cross-linking agent in the presence of a carbonate-based foaming agent and emulsified water dispersion of calcium stearate, followed by drying, pulverizing and surface cross-linking, therefore, the superabsorbent particles of application 18/027,439 will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including aspect ratio, average value of convexity, vortex time having the values the same as those claimed in instant invention, or values in the ranges overlapping with those as claimed in instant invention as well. 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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
40. Therefore, the present claims are obvious variants of the limitations claimed in a copending application 18/027,439.
41. Claims 1-18 are directed to an invention not patentably distinct from claims 1-15 of a copending application 18/027,439.
Specifically, see the discussion in paragraphs 37-40 above.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of com-mon ownership (see MPEP Chapter 2300). The copending application 18/027,439, discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue, the assignee can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that the conflicting inventions were commonly owned at the time the invention in this application was made, or name the prior inventor of the conflicting subject matter.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications pending on or after December 10, 2004.
42. Claims 1-18 are rejected under 35 U.S.C. 103(a) as being obvious over published US 2023/0331933.
Specifically, see the discussion set forth in paragraphs 37-40 above.
The applied reference has a common assignee and a common inventor with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art only under 35 U.S.C. 102(e). This rejection under 35 U.S.C. 103(a) might be overcome by: (1) a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not an invention “by another”; (2) a showing of a date of invention for the claimed subject matter of the application which corresponds to subject matter disclosed but not claimed in the reference, prior to the effective U.S. filing date of the reference under 37 CFR 1.131; or (3) an oath or declaration under 37 CFR 1.130 stating that the application and reference are currently owned by the same party and that the inventor named in the application is the prior inventor under 35 U.S.C. 104, together with a terminal disclaimer in accordance with 37 CFR 1.321(c). This rejection might also be overcome by showing that the reference is disqualified under 35 U.S.C. 103(c) as prior art in a rejection under 35 U.S.C. 103(a). See MPEP § 706.02(l)(1) and § 706.02(l)(2).
Conclusion
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764