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 .
Response to Amendment
The amendment filed on 6/25/2026 has been entered. Claim(s) 1-20 is/are currently amended. Claim(s) 1-20 is/are pending and is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 6/25/2026, with respect to claim objection has been fully considered and is persuasive. The claim objection is withdrawn.
Applicant's argument filed on 6/25/2026, with respect to specification objection has been fully considered but is not persuasive.
Applicant did not amend the specification to address the issue coming from “40% to 80% by weight of particles … of at least one synthetic water-soluble polymer P, and 0.5% to 5.0% by weight of at least one emulsifying agent, the percentages being expressed by weight relative to the weight of the lipophilic apolar solvent” in step a) [P4L1-4, spec.] and “a multiphase suspension MSa containing 10% to 65% by weight of synthetic water-soluble polymer P, the percentages being expressed by weight relative to the weight of the multiphase suspension MSa” [P4L8-10, spec.] in step c).
Applicant's argument filed on 6/25/2026, with respect to 112(b) rejection has been fully considered but is not persuasive.
The amendment from “10% to 65%” to “at least 10%” introduces new matter as stated in the 112(a) rejection below. It is also indefinite as stated in the 112(b) rejection below.
Specification
The disclosure is objected to under 37 CFR 1.71, as being so incomprehensible as to preclude a reasonable search of the prior art by the examiner. For example, the following items are not understood:
The specification recites “40% to 80% by weight of particles … of at least one synthetic water-soluble polymer P, and 0.5% to 5.0% by weight of at least one emulsifying agent, the percentages being expressed by weight relative to the weight of the lipophilic apolar solvent” in step a) [P4L1-4, spec.]. This can be interpreted as every 40-80 g of the polymer P and every 0.5-5.0 g of the emulsifying agent per 100 g of the solvent, which will lead to a content of 28.5-43.2 wt% of the polymer P and 0.36-2.7 wt% of the emulsifying agent in the oily suspension. Thus, after combining this oily suspension with a brine, the content of the polymer P has to be lower than 28.5-43.2 wt% because the polymer P is diluted by the brine. However, the specification recites “a multiphase suspension MSa containing 10% to 65% by weight of synthetic water-soluble polymer P, the percentages being expressed by weight relative to the weight of the multiphase suspension MSa” [P4L8-10, spec.] in step c) after combining the oily suspension with a brine, which is not consistent with the limitation in step a) because the content of polymer P cannot reach 65 wt% as explained above.
It is not clear whether the content 40% to 80% of polymer P is actually based on the oily suspension (which makes sense) or based on the solvent (which does not make sense as explained above) in step a), or the limitation of 10% to 65% by weight of synthetic water-soluble polymer P by weight relative to the weight of the multiphase suspension MSa” in step c) is wrong.
In Example 1, the specification recites “[t]he multiphase suspension MS1 containing 50% by weight of polymer P1 is prepared according to the method of the invention: an oily suspension is prepared by adding to a mineral oil under stirring 60% by weight of polymer particles P1” [0070 pgpub]. Actually, in Table 1, the polymer P1 is 55.55% (not 60%) based on the MS1, not based on the lipophilic apolar solvent (mineral oil). There is no data to show that “40% to 80% by weight of particles … of at least one synthetic water-soluble polymer P, the percentages being expressed by weight relative to the weight of the lipophilic apolar solvent”.
Similar issue exists in step b) “a brine B is prepared by adding to water 30% to 60% by weight of at least one calcium halide and 0.05% to 1.50% by weight of at least one rheology modifier, the percentages being expressed by weight relative to the weight of the water” [P4L5-7, spec.]. Instead of relative to the weight of the water, it may actually be relative to the weight of the brine B; or the limitation of “the percentages being expressed by weight relative to the weight of the multiphase suspension MSa” is wrong.
Applicant is required to submit an amendment which clarifies the disclosure so that the examiner may make a proper comparison of the invention with the prior art.
Applicant should be careful not to introduce any new matter into the disclosure (i.e., matter which is not supported by the disclosure as originally filed).
A shortened statutory period for reply to this action is set to expire TWO (2) MONTHS from the mailing date of this letter.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 8 and 16-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “at least 10% by weight of synthetic water-soluble polymer P, the percentages being expressed by weight relative to the weight of the multiphase suspension MSa” which is a broader limitation than the original “10% to 65%” and is not supported by the previously filed specification.
Claims 8 and 16-20 recite “at least 15% by weight of particles of water-soluble polymer P” which is a broader limitation than the original “15% to 55%” and is not supported by the previously filed specification.
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.
Claims 1-20 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.
Claim 1 recites “40% to 80% by weight of particles … of at least one synthetic water-soluble polymer P, and 0.5% to 5.0% by weight of at least one emulsifying agent, the percentages being expressed by weight relative to the weight of the lipophilic apolar solvent” in step a). This can be interpreted as every 40-80 g of the polymer P and every 0.5-5.0 g of the emulsifying agent per 100 g of the solvent, which will lead to a content of 28.5-43.2 wt% of the polymer P and 0.36-2.7 wt% of the emulsifying agent in the oily suspension. Thus, after combining this oily suspension with a brine, the content of the polymer P has to be lower than 28.5-43.2 wt% because the polymer P is diluted by the brine. However, claim 1 recites “a multiphase suspension MSa containing at least 10% by weight of synthetic water-soluble polymer P, the percentages being expressed by weight relative to the weight of the multiphase suspension MSa” in step c) after combining the oily suspension with a brine, which is not consistent with the limitation in step a) because “at least 10%” means the content of polymer P can reach above 43.2 wt%.
It is not clear whether the content 40% to 80% of polymer P is actually based on the oily suspension (which makes sense) or based on the solvent (which does not make sense as explained above) in step a), or the limitation of at least 10% by weight of synthetic water-soluble polymer P by weight relative to the weight of the multiphase suspension MSa” in step c) is wrong.
In Example 1, the specification recites “[t]he multiphase suspension MS1 containing 50% by weight of polymer P1 is prepared according to the method of the invention: an oily suspension is prepared by adding to a mineral oil under stirring 60% by weight of polymer particles P1” [0070 pgpub]. Actually, in Table 1, the polymer P1 is 55.55% (not 60%) based on the MS1, not based on the lipophilic apolar solvent (mineral oil). There is no data to show that “40% to 80% by weight of particles … of at least one synthetic water-soluble polymer P, the percentages being expressed by weight relative to the weight of the lipophilic apolar solvent”.
Similar issue exists in step b) “a brine B is prepared by adding to water 30% to 60% by weight of at least one calcium halide and 0.05% to 1.50% by weight of at least one rheology modifier, the percentages being expressed by weight relative to the weight of the water”. Instead of relative to the weight of the water, it may actually be relative to the weight of the brine B; or the limitation of “the percentages being expressed by weight relative to the weight of the multiphase suspension MSa” is wrong.
Claims 2-20 are rejected likewise as depending on claim 1.
As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. See MPEP 2173.06(II). Since the meanings and scopes of claim 1 are not clear, it is not proper to reject claims 1-20 on the basis of prior art.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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, Robert Jones can be reached on (571) 270-7733. 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.
/JIANGTIAN XU/Primary Examiner, Art Unit 1762
Prosecution Insights