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 .
Rejections
Claim Rejections - 35 USC § 112
1. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
2. Claims 1-4 and 6-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A. The instant claims 1 and 15 recite “an aqueous polymer composition” in the preamble. The claims then recite the method steps. None of the method steps require water. The recitations of “solution” are noted. However, the solutions are not required to be aqueous. It is therefore not clear if the applicant intends the full scope of the claim steps following “comprising” of the instant claim 1, including non-aqueous solutions in all of the claimed steps, or if “aqueous polymer composition” requires water at one or more of the method steps. In the latter case, it is not clear which step requires water because no water is required in the steps following “comprising”. The applicant may be their own lexicographer and redefine “aqueous polymer composition” to include non-aqueous polymer compositions. It is therefore not clear if “aqueous polymer composition” requires water in one or more of the method steps or if the applicant has redefined “aqueous polymer composition” to read on non-aqueous polymer compositions”. The scope of the instant claims is therefore not clear.
The claims depending from claims 1 and 15 contain the above noted lack of clarity also. This includes claims 1-4, 6-14, and 16-20
For the purpose of examination, the claims will be taken as including non-aqueous solutions only.
B. The instant claim 4 depends from claim 1. The instant claim 4 requires heating the first solution to evaporate water. There is no antecedent basis for water in the first solution of the instant claims 1 and 4. It is therefore unclear if the instant claim 1, first solution, requires water or not and it is unclear if claim 4 is adding the requirement that the first solution contain water though water is not required in claim 1. The lack of clarity is caused by the lack of antecedent basis and the lack of clarity discussed in paragraph 2.A. above.
3. The instant claim 5 is not a subject of the above rejection because it clearly requires water in the first solution. The instant claim 5 is objected to because it depends from claim 3 which is rejected above as are the claims from which claim 3 depends directly and indirectly.
Claim Rejections - 35 USC § 102
4. 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.
5. Claims 1-4, 6, 8, and 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pat. No. 4970260 Lundberg et al.
Lundberg discloses making an aqueous solution of a polymer complex which contains about 0.1 to about 5.0 grams of polymeric complex per 100 grams of water. The polymer complex is a mixture of an anionic and a cationic polymer. This solution falls within the scope of the instantly claimed first solution.
The aqueous polymer complex is made by mixing various amounts of an aqueous solution containing a first water soluble copolymer containing nonionic and anionic monomers with an aqueous solution containing a second water soluble copolymer containing a water- soluble monomer and a cationic monomer. These aqueous polymer solutions fall within the scope of the instantly claimed receiving of the second and third solutions. The ratio of anionic to cationic functional groups in the water-soluble polymer complex are about 50/1 to about 1.2/1 or from about 0.8/1 to about 1/50.
See Lundberg, the abstract, column 3, lines 3-8, noting the mixture of anionic and cationic polymers in the aqueous viscosification solutions, column 4, lines 18-21, noting the blending of the polymers together, lines 21-23 and 31-35, noting the ratios of the anionic to cationic species, lines 35-36, noting that the polymer complex is soluble in distilled water, lines 46-48, noting the mixing of the individual solutions of copolymers (A) and (B) which gives the instantly claimed first, second, and third solutions, and lines 62-67, noting the concentrations of copolymer (A) in the aqueous solutions thereof, and column 5, lines 1-6, noting the concentrations of copolymer (B) in the aqueous solutions thereof. Lundberg, column 6, lines 32-43, teaches that the interpolymer complexes are formed by dissolving the appropriate weight of each copolymer into an aqueous solution to the desired polymer level. The solutions are then vigorously mixed. The calculations of Lundberg, column 6, lines 33-43 coupled with the particulars of the individual solutions, including polymer concentration and polymer molecular weight dictates the viscosities of the solutions of copolymers (A) and (B) and the solution of the mixture of copolymers (A) and (B). Lundberg, column 5, lines 60-68, column 6, lines 1-68, column 7, lines 1-53, and column 8, lines 1-2, particularly noting the viscosities of column 6, lines 59-65, noting the complex viscosities, and lines 66-68, noting the viscosities of the individual polymer components. Note also the viscosities of the solutions of copolymers (A) and (B), individually, of column 7, lines 1-3, and the viscosities of the complexes of copolymers (A) and (B), after mixing, of lines 20-31 and 35-47.
These considerations of the viscosities of the individual solutions of copolymer (A) and copolymer (B) and the viscosity of the complex formed by mixing these solutions falls within the scope of the instantly claimed assessing the viscosity of each of the first, second, and third solutions.
The amounts of each solution of copolymer (A) and copolymer (B) of Lundberg dictates the viscosity of the solution of the complex of copolymer (A) and copolymer (B) of Lundberg which falls within the scope of the adjusting of the viscosity of the instant claim 1
The instant claim 1 does not define what degree of assessment of viscosity is required and encompasses adding no further amounts of solution of copolymer (A) and solution of copolymer (B) to the final solution of the complex of copolymer (A) and copolymer (B) of Lundberg.
Note the viscosifier effects of the polymer complex of Lundberg, column 7, lines 4-13 and 49-53 and column 8, lines 1-2.
Lundberg uses their aqueous solutions of anionic and cationic copolymers as viscosification agents. See Lundberg, column 1, lines 5-11 and column 2, lines 21-32 and 64-68. Therefore, Lundberg must consider what the viscosities of their aqueous solutions of anionic and cationic copolymers.
Lundberg’s disclosure of the concentrations of the solution of copolymer (A) and the solution of copolymer (B) and the ratios of the anionic/cationic species necessarily dictates the solid percentage of the mixture of these solutions which falls within the scope of the instant claim 2.
The choice of solids contents of the solution of copolymer (A) and the solution of copolymer (B) and the ratios of the anionic/cationic species necessarily dictates the solid percentage of the mixture of these solutions necessarily requires a simultaneous consideration of the range of solids contents desired by Lundberg and a continuous addition of amounts of each of the solution of copolymer (A) and the solution of copolymer (B) to achieve the solids contents of Lundberg until the final desired solids content is reached. This falls within the scope of the comparing of the assessed solid percent of the first solution to the first predetermined range, identifying a first solid percent variation, and adjusting the solid percent of the first solution based on the first solid percent variation. All of these steps must necessarily be performed to mix two solutions to give a mixture thereof with a final desired content of each polymer. This falls within the scope of the instant claim 3.
The containers of Lundberg are not described as being closed. Therefore, the heating of Lundberg, column 6, lines 59-64, and column 7, lines 25-31 and 40-48, necessarily evaporates some water which falls within the scope of the instant claim 4 necessarily and inherently. See MPEP 2112.
The addition of the amounts of water and polymer needed to give the polymer contents of each of the solution of copolymer (A) and the solution of copolymer (B) of Lundberg falls within the scope of the instant claim 6 because these steps adjust the solid contents of the second and third solutions and both solutions of Lundberg fall within the scope of the second and third solutions of the instant claims 6 and 8.
The water-soluble polymers of Lundberg, column 3, lines 41-45, and column 4, lines 1-5 fall within the scope of the instant claims 11-14.
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 5, 7, 9, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. No. 4970260 Lundberg et al.
The entire discussion of paragraph 5 above is repeated here.
Lundberg does not describe the method steps of the instant claims 5, 7, and 9.
Lundberg does describe the solids contents of their solution of copolymer (A) and their solution of copolymer (B) and the ratios of the copolymers (A) and (B) in the solution thereof. Lundberg teaches using the final mixture as a viscosifier.
It would have been obvious to one of ordinary skill in the art to adjust the solids contents of all of the solutions of Lundberg, including by adding water to the first solution, according to the instant claims 5, 7, and 9 because addition of further polymer or solvent to the solutions of Lundberg based on observing whether or not the current solution had Lundberg’s desired properties, such as desired solids content or desired viscosity, would have given predictable and calculatable viscosities and solids contents as well as the effects desired from the final compositions of Lundberg. This makes the instant claims 5, 7, and 9 obvious.
Lundberg does not describe the method step of the instant claim 10.
Lundberg discloses adding acid, base or salt and amounts thereof to their compositions at column 4, lines 64-68 and column 5, lines 1-6. The exemplified effects of salt contents of Lundberg’s examples are particularly noted.
It would have been obvious to one of ordinary skill in the art to adjust the acid, base, and/or salt contents of each of the solution of copolymer (A), solution of copolymer (B), and solution of the complex of copolymers (A) and (B) of Lundberg to obtain the desired effects of these additives and to add them in the form of solutions because this is a convenient way to mix such additives to polymer solutions and the amounts and acids, bases and salts as well as method of adding them would have been expected to give only predictable results to the method of Lundberg.
Objections
8. Claims 15-20 are would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
There is no teaching in the closest prior art seen by the examiner to perform the methods of the instant claims 15-20 or to modify the inventions of the closest prior art seen by the examiner into the methods of the instant claims 15-20.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK D NILAND/Primary Examiner, Art Unit 1762