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 Objections
Claims 2 – 4, 11, 12, 14 & 15 are objected to by the examiner.
Regarding claims 2 – 4, 11, 12, 14 & 15, the claims have been canceled, as indicated by the Applicant (Remarks, p. 7, Section 1), however, the claims’ text is still present. Examiner points to MPEP § 714 and 37 CFR 1.121(c)(4), which provides: no claim text shall be presented for any claim in the claim listing with the status of “canceled”. The text of the canceled claims is included; therefore, these claims fail to comply with 37 CFR 1.121. Applicant is advised that any future responses that do not correct this issue may be considered noncompliant and denied entry.
Response to Arguments
In response to the non-final Office Action (dated 18 February 2026), the Applicant submits the following:
-- The independent base claim 1 has been substantially amended with the limitations previously established by dependent claims 2, 3 & 4.
-- Claims 2 – 4, 11, 12, 14 & 15 have been canceled.
-- Claims 5 – 9 & 13 have been amended to be dependent upon claim 1.
-- Claim 10 has been amended to recite a method for sludge dewatering.
-- No new matter has been entered.
The arguments provided by the Applicant have been fully reviewed & thoroughly considered but are ultimately found unpersuasive in view of the amended claims.
The Applicant presented what was initially meant by “one step” &/or “in one step” and provides the foreign priority application (CN 202011483503) wherein a Chinese phrase, which means “prepared in a single batch” or “prepared in a single process”, was mistranslated to “one step” (Remarks, p. 8, bottom half).
The Applicant’s arguments appear to indicate that the instant specification includes translation errors relative to the original priority document. No English translation of the non-English foreign application has been filed. The Office may require that an English translation be filed when deemed necessary by the examiner. See 37 CFR 1.55(g)(3)(iii).
In this case an English translation of the priority document is requested in order to substantiate the Applicant’s remarks regarding translation errors. Note that when an English language translation of a non-English language foreign application is required, it must be filed together with a statement that the translation of the certified copy is accurate. See 37 CFR 1.55(g)(4).
The Applicant’s arguments regarding translation errors are not persuasive in the absence of a translation to the extent that they are relied upon to overcome any grounds of rejection.
The Applicant points again to the foreign priority application to clarify “means” in light of the ambiguity it created, detailed in the prior Office Action. Applicant presents that “means” is used in the context of a process, rather than a means-plus-functional limitation. As such, “emulsification means” is used in the context of a method claim (Remarks, p. 9, middle 3 paragraphs).
The argument relates to claims that have been canceled, and as such, is considered moot in view of the amended claims.
The Applicant traverses the anticipation rejection of claim 1 over Cicchiello et al. (US 5,883,181 A) and argues Cicchiello merely mixes microemulsions & macroemulsions to obtain a multimodal particle size distribution and does not teach or suggest the preparation of an emulsion having bimodal particle size distribution in situ by a multi-stage polymerization reaction within the same system (Remarks, p. 10 & 11).
The Applicant appears to be arguing that the steps in the product-by-process limitation result in a more homogeneous particle distribution than Cicchiello. Examiner points to Cicchiello (Examples, col. 25 – 30) which disclose homogenization of the two particle size distributions. A homogeneous mixture is expected to have a structure similar to that of Figure 3 (Drawings, p. 2) rather than the heterogeneous structure of Figure 5 (Drawings, p. 3).
The Applicant states, when the invert emulsion system is used alone as a dewatering agent, the invention achieves two effects (cell wall disruption and flocculation) in a single product. The Applicant maintains the unexpected results achieved by the invention cannot be anticipated or obvious over the prior art (Remarks, p. 12).
Examiner reiterates, the non-final Office Action (dated 18 February 2026), rejected the claims under 35 U.S.C. § 102(a)(2), however, the Applicant argues the invention achieved unexpected results. Unexpected results may be relied upon as objective evidence to support non-obviousness, but cannot be relied upon to overcome anticipation rejections under 35 U.S.C. § 102. The Applicant’s arguments are therefore insufficient to overcome the § 102 rejection of claims 1 – 15. The Applicant’s allegations of unexpected results are pertinent to the § 103 rejection of claims 6 & 9 (detailed herein). However, said results are not commensurate with the scope of the claims.
The results disclosed in Table 1 (Specification, p. 21 & 22) provide 1 inventive example compared with two control examples. Said inventive example is disclosed as comprising methacryloyloxyethyl trimethylammonium chloride (emulsion A) and dimethyldiallyl ammonium chloride (emulsion B) (Specification, p. 17-18), however, the claims allow for various other functional monomer(s) (A) (see Claim 7). Additionally, the claims currently allow for any quaternary ammonium salt to be employed as the functional monomer (B) (see Claim 13), but the only such quaternary ammonium salt employed in the inventive examples is dimethyldiallyl ammonium chloride.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See MPEP § 716.02(d). Additionally, applicants have the burden of explaining the data proffered as evidence of non-obviousness. See MPEP § 716.02(b). The examples in the specification are not reasonably commensurate in scope with the claims, and the Applicant has provided no explanation regarding how the exemplified results could reasonably be extended to the full scope of the claims. The examples are therefore insufficient to establish non-obviousness of the claims.
Per the amended claims, the claimed invention is defined by product-by-process limitations. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP § 2113(I).
This rejection is FINAL.
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.
Claims 10 & 13 are rejected under 35 U.S.C. § 112(b) 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 10, claim 10 is rejected for being indefinite. Claim 10 establishes limitations pertaining to “…a certain concentration…” and “…a certain amount…” (Claim 10, lines 2 & 4, respectively). The term “certain” in claim 10 is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Absent any further definitions thereof, it is not possible to determine what concentration(s) and what amount(s) are required by the claims.
Regarding claim 13, claim 13 recites the limitation “…the preparation method for the inverted emulsion of claim 7…” in line 1 of Claim 13. There is insufficient antecedent basis for the preparation method.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 5, 7, 8 & 13 are rejected under 35 U.S.C. §102(a)(2) as being anticipated by Cicchiello et al. (US 5,883,181 A).
Regarding claim 1, Cicchiello teaches inverse emulsions comprising at least two particle size distributions and methods of producing said inverse emulsions (col. 1, lines 41-45). Cicchiello employs the use of two emulsions (a microemulsion & a macroemulsion), wherein the microemulsion has a particle size distribution of most preferably less than 1,000 Angstroms (i.e., 100 nm) and the other emulsion has a particle size distribution of most preferably at least 2,000 Angstroms (i.e., 200 nm) greater than those in the microemulsion (col. 8, lines 34-57). Thus, Cicchiello teaches the two particle size distributions arise from the combination of an emulsion having a particle size distribution of 100 nm or less and an emulsion having a particle size distribution of 300 nm or greater.
Pertaining to the process steps as required by the claim, product-by-process limitations are not limited to the manipulations of the recited steps, only the structure implied by the steps. Once a product appearing to be substantially identical is found and a prior art rejection is made, the burden shifts to the Applicant to show a non-obvious difference. See MPEP § 2113. The Applicant states the structure imparted by the process as claimed is a uniform (i.e., homogenous) distribution of large & small particles. Cicchiello discusses various inventive examples wherein homogenizing occurs (Examples, col. 25 – 30). This reads on the uniform (i.e., homogenous) distribution arising from the claimed process steps, as required by the claim.
Regarding claim 5, Cicchiello discloses tailoring the ratios of the two emulsions to meet specific requirements (i.e., user dependent) followed by simply mixing the two emulsions resulting in an optimal bimodal emulsion (col. 3, lines 36 – 45). When elaborating on mixing ratios, Cicchiello teaches mixing ratios of the microemulsion & the second emulsion may range from 1 – 99 parts and from 99 – 1 parts, respectively (col. 7, lines 52-65).
Regarding claims 7, 8 & 13, Cicchiello teaches the use of quaternary ammonium salts, such as diallydimethylammonium chloride (DADMAC) (col. 5, lines 49-60) with acrylamide or (meth)acrylamide (col. 6, lines 5, 6 & 16-21). Acrylamide and (meth)acrylamide both read on the functional monomer A, as required by claim 7, and DADMAC reads on the unsaturated quaternary ammonium salt for functional monomer B, as required by claims 8 & 13. Cicchiello discloses several embodiments of their invention. Example 19 comprises 144.07g of acrylamide and 315.41g of acryloyloxyethyltrimethylammonium chloride (col. 27, lines 37-39). Example 21 comprises 387.14g acrylamide and 76.76g of acryloyloxyethyltrimethylammonium chloride (col. 28, lines 45-47). These two examples thus teach a ratio of functional monomer A (i.e., acrylamide) to functional monomer B (i.e., DADMAC) from 1:2 (Example 19) to 5:1 (Example 20). This reads on and entirely encompasses the range of 1:2 to 4:1 as required by the claims.
Claim Rejections - 35 USC § 103
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 6 & 9 are rejected under 35 U.S.C. §103 as being obvious over Cicchiello et al. (US 5,883,181 A) in view of Easterly (US 4,464,508 A).
Regarding claim 6, Cicchiello expressly states that the inventive multimodal emulsions resulting from combining a microemulsion comprising a functionalized polymer and a second polymeric emulsion having a certain total charge exhibit better performance as a flocculant in sludge dewatering than a single emulsion (e.g., macroemulsion) comprising a polymer having an identical charge (col. 13, lines 21-27).
Cicchiello discloses the use of surfactants (i.e., emulsifiers) having a HLB value in the range of 8 – 12 (col. 10, lines 3-4). Examples of said emulsifiers provided by Cicchiello include sorbitan trioleate, sorbitan monooleate and polyoxyethylene (col. 10, lines 21-24). Cicchiello states formation of the inverse emulsion depends on the proper selection of the concentration of the surfactants and the HLB of the surfactant mixture (col. 9, lines 64-67). Cicchiello discloses the emulsifiers to be present in amounts of 1 – 6 wt.% (col. 21, lines 4-6), however, Cicchiello is silent on the HLB of the secondary emulsifier.
In the same field of endeavor, Easterly teaches inverse emulsions (i.e., water-in-oil) comprising an acrylamide & an ammonium chloride (Abstract); suitable for use as flocculating agents &/or in the paper manufacturing process. Easterly teaches the emulsifier has a HLB value in the range of 2 – 9, and more preferably in the range of 3 – 6 (col. 3, lines 64-66).
As both Cicchiello & Easterly disclose embodiments of their inventions in the capacity of a flocculant/flocculating agent, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the surfactant taught by Easterly into the surfactant mixture taught by Cicchiello, as the objective of both inventions align entirely with one another. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Cicchiello in view of Easterly in this way results in an invert emulsion comprising two compound emulsifiers, one with an HLB of 8 – 12 and the other with an HLB of 3 – 6, wherein both emulsifiers are included in the invert emulsion in a cumulative amount of 1 – 6 wt.%. Modification in this way reads on all limitations established by claim 6.
Regarding claim 9, maintaining the modification of Cicchiello in view of Easterly previously detailed, Cicchiello teaches the use of redox initiators, such as ferrous ammonium sulfate/ammonium persulfate, as well as azo compounds, such as azobisisobutyronitrile (col. 10, lines 35-42). Easterly teaches appropriate amounts for the initiators in the range of 0.01-0.1 wt.% (col. 4, lines 60-64). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Pertaining to the process steps within the dependent (compositional) claim 9, product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP § 2113(I).
Conclusion
THIS ACTION IS MADE FINAL. 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 CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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 at (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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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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