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 .
Response to Amendment
2. The amendment filed by Applicant on December 19, 2025 has been fully considered. All previous rejections are maintained for the reasons set forth in “Response to Arguments” section below.
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.
3. 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).
4. The rejection is adequately set forth on pages 2-13 of an Office action mailed on September 25, 2025 and is incorporated here by reference.
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
5. 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).
6. The rejection is adequately set forth on pages 13-21 of an Office action mailed on September 25, 2025 and is incorporated here by reference.
Since no Terminal Disclaimer has been filed, the rejection is maintained.
In response to Applicant’s request to hold in abeyance a response, such as, a terminal disclaimer (TD) to the pending ODP rejection, it is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Obviousness Double Patenting Rejection II
7. 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).
8. The rejection is adequately set forth on pages 21-25 of an Office action mailed on September 25, 2025 and is incorporated here by reference.
Since no Terminal Disclaimer has been filed, the rejection is maintained.
In response to Applicant’s request to hold in abeyance a response, such as, a terminal disclaimer (TD) to the pending ODP rejection, it is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Obviousness Double Patenting Rejection III
9. 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).
10. The rejection is adequately set forth on pages 26-30 of an Office action mailed on September 25, 2025 and is incorporated here by reference.
Since no Terminal Disclaimer has been filed, the rejection is maintained.
In response to Applicant’s request to hold in abeyance a response, such as, a terminal disclaimer (TD) to the pending ODP rejection, it is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Response to Arguments
11. Applicant's arguments filed on December 19, 2025 have been fully considered.
12. With respect to Applicant’s arguments regarding the rejection of Claims 1-18 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), it is noted that:
1) Instant claims are related to a super absorbent polymer, comprising a powder-type base resin…, wherein the super absorbent polymer satisfies the following properties of an average value of an aspect ratio (A/R), which is a ratio of the shortest diameter of a particle to the longest diameter of the particle measured for particles having a particle diameter of 300 µm to 600 µm, is 0.75 or more.
Thus, the super absorbent polymer comprises “powder-type” resin; instant claims are silent with respect to the powder-type resin having the shape of spherical primary particles or elliptical primary particles.
Further, the measurement of the aspect ratio is claimed as being measured only for particles having a particle diameter of 300-600 micron (and not for all claimed powder); and further the cited aspect ratio of 0.75 means that particles maybe of any shape as long as one side is a little bigger than the other side.
Furthermore, Figure 1 of instant specification, as presented below, shows that the claimed powder-type base resin is having irregular shape:
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Figure 1 of instant specification
2) It is noted that the above rejection of claims 1-18 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) is based on the combination of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
It is not based on the teachings of Adachi et al only.
3) 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 measured for particles with specific diameter 300-600 micron, average value of convexity, vortex time, CRC and AUP under pressure of 0.7 psi, measured according to the claimed conditions, 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; addition of 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.
4) With respect to Applicant’s arguments regarding the specific teachings of Adachi et al, it is noted that:
a) Adachi et al teaches the particulate water absorbent is preferably of a shape other than the shape of spherical primary particles and the shape of ellipsoidal primary particle (col. 22, lines 13-15); that is, by using the term “preferably” total exclusion of the spherical primary and ellipsoidal primary particles is not required by the teachings of Adachi et al. Under 35 USC 103 a preferred embodiment is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972).
b) Adachi et al further teaches that “more preferably” particulate water absorbent is of shape of the granulated product of a spherical or ellipsoidal particles (col. 22, lines 16-17), as also shown below:
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Thus, the particulate water absorbent of Adachi et al maybe a granulated product of spherical particles, e.g. agglomerated spherical particles of different sizes may still have an ellipsoidal shape, at least partially of those with corresponding aspect ratio of 0.75.
c) Furthermore, in column 21, line 64-column 22, line 12, Adachi et al recites all possible shapes of the water absorbent, including primary particle shape, granulated product of the primary particles, indefinite shapes of the crushed product.
In the following paragraph (col. 22, lines 13-23), Adachi et al recites the “preferable” shapes of said water absorbent. However, based on the teachings in column 21, lines 64-65, the primary spherical particles can still be, at least partially, part of the disclosed water absorbent of Adachi et al.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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