DETAILED ACTION
This communication responds to the Amendment filed June 10, 2026. Claims 1, 3, and 5-16 are currently pending. Claims 1, 3, 5, 6, and 11-16 are under examination.
The rejections of claims 1, 3, 5, and 6 under 35 USC 102 set forth in the Office Action dated March 10, 2026 are WITHDRAWN due to Applicant’s amendments.
Claims 1, 3, 5, and 6 are newly REJECTED. New claims 11-16 are also REJECTED.
These rejections are necessitated by amendment. Thus, this action is final.
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.
Claims 1, 3, 5, 6, and 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kagura et al. (JP 2000-198809).
Regarding claims 1, 5, 6, and 14-16, Kagura teaches storing an aqueous solution of polyacrylic acid at 50°C for three months. (Test Ex. 1; Ex. 1.) No pH or neutralization agent is added to the PAA aqueous solution – either during or after polymerization – which indicates that the carboxylic acid groups are not neutralized, and that the degree of neutralization is minimal. (Cf. Ex. 2, in which NaOH is added to the PAA solution to (partially) neutralize the acid groups.) Further, the PAA of Example 1 is polymerized in the presence of tetraethylene glycol dimercaptan and sodium hypophosphite. (Ex. 1.) Kagura discloses that tetraethylene glycol dimercaptan is a chain transfer agent. In addition, sodium hypophosphite is a known chain transfer or molecular weight control agent in acrylic acid polymerizations. (See, e.g., Rife et al. (US 2,789,099) col. 2, line 71 – col. 3, line 4.)
The difference between Example 1 of Kagura and the present claims is that the PAA of Example 1 is a homopolymer with a weight average molecular weight of 8000, which is outside the claimed range. However, Kagura more generally teaches that the PAA homopolymer may have an Mw of 3000 to 10,000 (see para. [0038]), which overlaps the claimed range. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Kagura.
Regarding claim 3, Ex. 1 of Kagura includes 5 parts tetraethylene glycol dimercaptan and 20 parts NaPO2H2, for a total of 0.025 mol chain transfer agents. The acrylic acid monomer is present in the amount of 575 parts of an 80% aqueous solution, or 6.39 mol, resulting in the chain transfer agents being present in the amount of 3.9 mol%, relative to the amount of acrylic acid monomer.
Regarding claims 12 and 13, Kagura is silent as to a haze value. However, given the storage solution of Kagura is substantially identical to the recited storage solution, and given that Kazura teaches that the polymer is colorless and transparent with little change over time (see para. [0057]), it would be reasonable for a person of ordinary skill to infer that the haze approaches 0%.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. Applicant argues that storing a polycarboxylic acid polymer with Mw between 1000 and 6000 at temperatures above 40°C unexpectedly improves the polymer’s haze value. (Remarks, pp. 6-7.)
The examiner disagrees. As discussed above, Kagura teaches a PAA polymer that is stored at a temperature above 40°C and has Mw that overlaps the claimed range. Such a polymer would be expected to have a low haze value, especially given Kagura’s teaching that the polymer is transparent.
The examiner is also unconvinced that the Mw of the polymer is material to haze. Applicant’s Ex. 9 has a haze of 0% and an Mw of 7200 (see para. [0135] of the published Specification), which is outside the claimed range.
Conclusion
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 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 CATHERINE S BRANCH whose telephone number is (571)270-3539. The examiner can normally be reached Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CATHERINE S. BRANCH
Primary Examiner
Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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