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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "20a” and “20b" have both been used to designate “core wrap” (see Specification, par. [0060]). Applicant can distinguish these two structures by, for example, referring to one as a first core wrap or an upper core wrap. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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.
Regarding claim 1, the limitation “a fracture energy of the polymer” is indefinite because it is unclear if “the polymer” refers to the polymer of the polymer particles or the polymer disposed on at least a part of a surface of the polymer particle.
Claims 5-8, 11 and 13-15 are rejected for substantially the same reason as claim 1. Each of these claims contains on instance of the limitation “the polymer” and it is unclear which of the polymer particle or polymer disposed on the surface of the polymer particle is being further limited.
Claim 1 further contains the limitation “a surface free energy” which is not tied to a particular structure. It is therefore not clear if “surface free energy” refers to that of the polymer particle, the polymer disposed on the surface of the polymer particle or some other structure containing or unrelated to the components. Appropriate clarification is required.
Claims 2-20 are rejected as being dependent on claim 1.
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 1-4, 6, 8-13 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt et al. (U.S. Pat. No. 8,236,715) in view of Miyajima et al. (U.S. App. Pub. No. 2018/0318792) and Torii et al. (U.S. App. Pub. No. 2016/0199529).
Regarding claims 1-2 and 9-10, Schmidt et al. discloses an absorbent structure including polymeric particles which are coated on the surface thereof with an elastic film-forming polymer. (Abstract). Schmidt et al. therefore discloses polymer particles having a polymer disposed on at least a part of the surface thereof, as claimed.
Schmidt et al. does not disclose a surface free energy in the range of 14 to 33 mJ/m2 as claimed.
Miyajima et al. discloses absorbent resin compositions which have improved absorbency under load and liquid gel permeability in the form of resin particles. (Abstract, Fig. 1). Miyajima et al. further teaches that it is generally known in the art to form gel gaps which prevent adhesion of swollen resin gels by treating the surface of the resin with hydrophobic polymer having low surface energy. (par. [0003]). Miyajima et al. therefore implicitly teaches that the surface energy of the water absorbent resin particles after treatment with a polymer material is a result effective variable to prevent adhesion of the swollen resin, enabling the formation of gel gaps.
While Miyajima et al. does not disclose the specific range for the surface energy of the coated water absorbent particles, since the instant specification is silent to unexpected results, the specific amount of surface energy is not considered to confer patentability to the claims. As the surface energy is a variable that can be modified, among others, by adjusting the amount of type of polymer coating on the surface of the resin particles, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the optimal surface energy in the coated resin particles of Schmidt et al. to obtain the desired improved water absorbency properties, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Schmidt et al. does not disclose a fracture energy under conditions of a tensile test at a tensile rate of 200 mm/min in the range of 2 x 106 J/m3 or more.
Torii et al. teaches a water absorbent resin material for use in a sanitary article which has a “Gel Grinding Enery” in the range of 15-100 J/g. (par. [0133]-[0136]). Torii et al. teaches that the Gel Grinding Energy value is a parameter that needs to be controlled in order to grind the hydrogel to the appropriately sized particles and provides maximum effect exhibited by the grinding device in shaping the gel. (par.[0081] and [0135]-[0136]).
While Torii et al. does not disclose a fracture energy measured by a tensile test as claimed, the reference teaches the art recognized result effect effective nature of the fracture energy of the hydrogel for grinding to the appropriate size. Since the instant specification is silent to unexpected results, the specific amount of surface energy is not considered to confer patentability to the claims. As the fracture energy is a variable that can be modified, among others, by adjusting the composition and size of the hydrogel, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the optimal fracture energy in the coated resin particles of Schmidt et al. to obtain the desired improved water absorbency properties, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claims 3-4, Schmidt et al. discloses that the absorbent particles are made from monomers including ethylenically unsaturated carboxylic acids like (meth)acrylic acid. (col. 9, lines 38-44).
Regarding claim 6, Schmidt et al. teaches that the film forming polymers on the surface of the water absorbent resin include polyurethane dispersions blended with (meth)acrylates. (col. 26, lines 7-37).
Regarding claims 8 and 11-13, Schmidt et al. teaches using polyalkylene glycol (i.e. polyoxyalkylene oxide) block polymer with the polyurethane coating. (col. 19, lines 21-67).
Regarding claim 15, Schmidt et al. does not explicitly disclose the type of polymerization process used to make the water absorbent polymer and coating. However, the method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. MPEP 2113.
Regarding claim 16, Schmidt et al. discloses that the absorbent particles are made from monomers including ethylenically unsaturated carboxylic acids like (meth)acrylic acid. (col. 9, lines 38-44).
Regarding claims 17-20, Schmidt et al. teaches a CRC (i.e. water retention value) of 20 to 60 g/g (col. 10, line 63 – col.11, line 2), overlapping with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Claims 5, 7 and 14 rejected under 35 U.S.C. 103 as being unpatentable over Schmidt et al. (U.S. Pat. No. 8,236,715) in view of Miyajima et al. (U.S. App. Pub. No. 2018/0318792) and Torii et al. (U.S. App. Pub. No. 2016/0199529), further in view of Daniel et al. (WO 2014/079710).
Schmidt in view of Miyajima and Torii et al. is relied upon as described in the rejection of claim 1, above.
Schmidt in view of Miyajima and Torii et al. does not disclose the use of polyvinyl chloride or a halide polymer.
Daniel et al. teaches a process for making water-absorbent polymer particles include surface treating them with a polymer composition which may include organic polymers such as polyvinyl chloride for improving the properties of the resin particles such as acquisition behavior and permeability. (page 12, last paragraph – page 13, 5th paragraph).
It would have been obvious to one of ordinary skill in the art to surface coat the water absorbent particles in Schmidt et al. with polyvinyl chloride as disclosed in Daniel et al.
One of ordinary skill in the art would have found it obvious to surface coat the water absorbent particles in Schmidt et al. with polyvinyl chloride in order to improved the properties thereof such as acquisition behavior and permeability
Regarding claim 7, Daniel et al. further discloses that silanol bearing polyvinyl alcohols are also suitable for resulting in improved properties. (page 13, 5th paragraph).
It would therefore have been obvious to one of ordinary skill in the art to use any of the materials disclosed in Daniel et al. as surface treatment materials in Schmidt et al. with a reasonable expectation of success in achieving improved properties such as acquisition behavior and permeability as discussed in Daniel et al. since the selection of a known material based on its suitability for its intended purpose is prima facie obvious. MPEP 2144.07.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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, Alicia Chevalier can be reached at 5712721490. 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.
/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 12/12/2025