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 .
Claim Status
The Amendment filed on 13 November 2025 has been entered; claims 1-3, 5-9, and 11-15 remain pending. Applicant’s election without traverse of Group I, claims 1-6 in the reply filed on 13 November 2025 is acknowledged. On Pages 11-12 of the Remarks filed 13 November 2025, Applicant identified claims 8 and 9 as reading on the elected group; however, claims 8 and 9 are drawn to nonelected compound claims of Group III. Claims 7-9 and 11-15 are hereby withdrawn.
Claim Objections
Claim 5 is objected to because of the following informalities: regarding Claim 5, the limitation “vinyl chloride” is listed twice (lines 6 and 7). Appropriate correction is required.
Claim Rejections - 35 USC § 102/103
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.
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.
Claims 1, 3, and 5 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 Whipple et al. (U.S. Patent Publication # 2001/0018503), hereinafter “Whipple” in the rejections below.
With respect to claims 1, 3, and 5, Whipple teaches fluorescent water-soluble polymers (Abstract) comprising a fluorescent (“first”) monomer consistent with recited Formula I when R1 = -ortho-(C6H4)COOH, a hydrocarbyl substituted with one or more functional groups, wherein the hydrocarbyl group substituted with one or more functional groups is the second chemical structure in Claim 3 (see Whipple: monomer 5 within Paragraphs [0011-0018], and see monomer 15 in Paragraph [0114]), wherein R2, R3, R5, R6, R8, and R9 = H, R4 = OH and R7 = O in Formula I;
and at least one second monomer embodied as allylsulfonate salt, acrylic acid, vinyl sulfonic acid, a vinyl sulfonate salt, methacrylic acid (see Paragraph [0049] for all foregoing monomers) vinyl acetate (Paragraph [0050]), an unsaturated mono- or di- carboxylic acid or anhydride (see Paragraph [0049]: acrylic, methacrylic, maleic, itaconic, acid, etc.), acrylamido-2-methylpropanesulfonic acid (AMPS), an acrylamide (see Paragraph [0050]; see also Paragraphs [0115-0117] for preferred second monomers).
The Examiner acknowledges that Whipple teaches ~11-12 different preferred first fluorescent monomers, of which structures (5) and (15) within Paragraphs [0011-0018, 0114]) indicate the first/fluorescent monomer and meet the limitations of claim 1, Formula I; However, Whipple teaches monomer 5/15 with “sufficient specificity” that one of ordinary skill in the art would arrive at the claimed combination. Moreover, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” monomer 5/15 as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Claims 2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Whipple et al. (U.S. Patent Publication # 2001/0018503), hereinafter “Whipple” in the rejections below.
With respect to claim 2, Whipple teaches that the first fluorescent monomer is present in the polymer within a preferred range of about 0.02 to about 0.5 mole percent (Paragraph [0094]).
Although Whipple provides mole percent instead of weight percent for the range of first/fluorescent monomer, it has been held that where the claimed parameters/properties may be expressed differently and thus may be distinct from what is disclosed in the prior art, it is incumbent upon applicants to establish that such difference is unobvious. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to employ the particular parameters as claimed, since it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33, and In re Russell, 169 USPQ 426.
With respect to claim 6, Whipple teaches randomly distributed first (fluorescent) and second monomer units (see Claim 1; Paragraphs [0024, 0025]), and therefore does not specifically teach that the first fluorescent monomer is an end group of the copolymer; however, it would have been obvious to the ordinary artisan that the randomly incorporated fluorescent monomer would end up being the terminal (end or starting monomers) in at least some of the polymers obtained during polymerization.
It is further submitted that there does not appear to be any criticality associated with the first monomer being positioned at the end of the polymer. Where 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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Popov et al. (Journal of Applied Polymer Science, 2017, Pages 1-11), cited by Applicant on the IDS filed on 06 April 2023, also appears to teach the limitations of claims 1-3, 5, and 6 (see Abstract; Page 1: Fig. 1: Structure F2, and see Pages 2-3: Scheme 2; Page 3 “Synthesis of PAA-F2” (1% mass of F2)).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLARE M PERRIN whose telephone number is (571)270-5952. The examiner can normally be reached 9AM-6PM 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, Bob Ramdhanie can be reached at (571) 270-3240. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/Primary Examiner, Art Unit 1779 30 January 2026