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 .
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.
Priority
This application is a 371 of PCT/US2022/017509 02/23/2022; PCT/US2022/ 017509 has PRO 63/152,442 02/23/2021.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 08/23/23 and 04/27/26 have been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
Election/Restrictions
Applicant’s election without traverse of claims 1-16 and species (i) Acrylamide polymer: a cationic acrylamide copolymer, (ii) Cellulose ether: hydroxyethyl cellulose ether, (iii) Associative polymer: hydrophobically modified polyacetal-polyether polymer, and (iv) Additive: dispersant in the reply filed on 05/04/26 is acknowledged.
Claims 1-18 are pending. Claims 17-28 are directed not non-elected invention and claims 4-5, 10-11 are directed to non-elected species. Claims 14-5, 10-11, 17-28 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention/species. Claims 1-3, 6-9, 12-16 are examined in this Office action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 6-9, 12-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6, 9-11, 15-18 of copending Application No. 18/278548. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claimed invention and copending claimed inventions are directed to a rheology modifier comprising acrylamide polymer and cellulose ether blend, wherein regarding instant claims 1-3, 6, 8-9, copending claim 1 discloses 0.05 to 70 wt% acrylamide polymer and 30 to 99.95 wt% cellulose ether, wherein copending claims 10-11 discloses cellulose ether is hydroxyetheyl cellulose, wherein copending claim 6 discloses the weight average molecular weight of the acrylamide polymer is in the range of about 0.05 to about 15 million, wherein the copensing claims 2-3 discloses acrylamide polymer is cationic.
Instant claims 7, 13-15 are same as copending claims 9, 16-18.
Regarding instant claim 12, copending claim 15 discloses the instant claimed amount s of acrylamide polymer and cellulose ether.
Regarding instant claim 16, since the composition requirement is made by the copending claims, such composition can be used for any future intended purpose, such as dry powder blend.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3, 6-9, 12-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6, 9-11, 15-18 of copending Application No. 18/278593. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claimed invention and copending claimed inventions are directed to a rheology modifier comprising acrylamide polymer and cellulose ether blend, wherein regarding instant claims 1-3, 6, 8-9, copending claim 1 discloses 0.05 to 70 wt% acrylamide polymer and 30 to 99.95 wt% cellulose ether, wherein copending claims 10-11 discloses cellulose ether is hydroxyetheyl cellulose, wherein copending claim 6 discloses the weight average molecular weight of the acrylamide polymer is in the range of about 0.05 to about 15 million, wherein the copensing claims 2-3 discloses acrylamide polymer is cationic.
Instant claims 7, 13-15 are same as copending claims 9, 16-18.
Regarding instant claim 12, copending claim 15 discloses the instant claimed amount s of acrylamide polymer and cellulose ether.
Regarding instant claim 16, since the composition requirement is made by the copending claims, such composition can be used for any future intended purpose, such as dry powder blend.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 6 does not properly limit the claim 1, for instance, claim 1 require greater than 6 million Daltons (lines 3). However, claim 6 require “from about 6 million Daltons” (line 2) ‘From about 6 million Daltons’ does not come under ‘greater than 6 million Daltons.’ Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-3, 6-9, 12, 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Bhargav (US 2015/0105500) in view of Pabalan (US 2015/0183979).
Regarding claims 1-3, 6-9, Bhargav discloses a rheology modifier composition comprising a blend of hydroxyethyl cellulose (Natrosol 250HBR) in amount of 85 wt% or 90 wt% and cationic polyacrylamide such as Praestol 644BC in amount of 10 wt% or Praestol 655BC-K in amount of 15 wt% (para [0055], [0058], table 4, 8), fall into instant claim range of cellulose ether in amount of 30 wt% to 99.95 wt% and acrylamide polymer in amount of 0.05 wt% to 70 wt%. Bhargav fails to explicitly disclose the acrylamide polymer having a weight average molecular weight of greater than 6 million Daltons (regarding instant claim 1), from about 6 million Dalton to about 15 million Daltons (regarding instant claim 6), or from about 8 million Dalton to about 12 million Daltons (regarding instant claim 7).
However, Pabalan in the field of a composition for enhancing viscosity (para [0024]) teaches a blend containing cationic acrylamide polymer (vinyl amine/acrylamide copolymer) having a weight average molecular weight of 35,000 to 10 million Daltons (para [0024], [0118]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the Bhargav to include cationic acrylamide polymer having a weight average molecular weight of 35,000 to 10 million Daltons, as taught by Pabalan. The rationale to do so would have been motivation provided by of Pabalan that to do so would retain the viscosity when subjected to shear, heat or high electrolyte (salt) concentration when suitably employed in applications requiring viscous liquids (Pabalan; para [0013], [0024], [0030]-[0031]).
Regarding claim 12, Bhargav discloses hydroxyethyl cellulose (Natrosol 250HBR) in amount of 85 wt% or 90 wt% and cationic polyacrylamide such as Praestol 644BC in amount of 10 wt% or Praestol 655BC-K in amount of 15 wt% (para [0055], [0058], table 4, 8), fall into instant claim range of cellulose ether in amount of 50 wt% to 99.95 wt% and acrylamide polymer in amount of 0.05 wt% to 50 wt%.
Regarding claim 15, Bhargav discloses a dispersant (para [0039]).
Regarding claim 16, Bhargav discloses Hydroxy ethyl cellulose (Natrosol 250HBR) was mixed with a copolymer of acrylamide and APTAC (acrylamido propyl trimonium chloride) (Praestol 644BC) to form blends (read on dry powder blend; para [0055]). During examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004). MPEP 2111.01.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Bhargav in view of Pabalan as applied to claim 1 above, and further in view of Sau (US 5574127).
Bhargav includes the features of claim 1 above.
Regarding claims 13-14, Bhargav does not disclose the composition further comprises associative polymer is hydrophobically modified polyacetal-polyether polymer.
Sau in the field of associative thickeners that are water solube polymer compositions (abstract) teaches wherein the associative polymer is hydrophobically modified polyacetal-polyether polymer (abstract; column 3, lines 51-54, a backbone of poly(acetal- or ketal-polyether) with ends that are capped with hydrophobic groups).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the Bhargav to include wherein the associative polymer comprising hydrophobically modified polyacetal-polyether polymer, as taught by Sau. The rationale to do so would have been motivation provided by of Sau that to do so would increase and maintain viscosity at required levels under specified processing conditions and end use situations (Sau; abstract; column 1, lines 15-17).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (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, RANDY P GULAKOWSKI can be reached at (571)272-1302. 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.
/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
Prosecution Insights