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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-19, in the reply filed on May 11, 2026 is acknowledged.
Claims 20-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claims 1 and 15 are objected to because of the following informalities:
Claim 1 recites “0.05 wt.% to 70.0 wt.%” in line 2 and “30.0 wt.% to 99.95 wt.%” in line 3. Claims must be one sentence in length, so the presence of a period calls into question if the claim is one sentence or more. For the purpose of further examination, it is taken to read as “0.05 wt% to 70.0 wt%” in line 2 and “30.0 wt% to 99.95 wt%” in line 3.
Claim 15 recites “0.05 wt.% to 50.0 wt.% or from 0.05 wt.% to 30.0 wt.%” in lines 2-3 and “50.0 wt.% to 99.95 wt.% or from 70.0 wt.% to 99.95 wt.%” in lines 3-4. Claims must be one sentence in length, so the presence of a period calls into question if the claim is one sentence or more. For the purpose of further examination, it is taken to read as “0.05 wt% to 50.0 wt% or from 0.05 wt% to 30.0 wt%” in lines 2-3 and “50.0 wt% to 99.95 wt% or from 70.0 wt% to 99.95 wt%” in lines 3-4.
Appropriate correction is required.
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.
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 1-5, 10-15, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Bhargava et al (US 2015/0115500 A1) in view of Scott Bader Co. (GB 2077750 A).
Regarding Claims 1-3 and 15: Bhargava teaches a rheology modifier composition containing 50-99wt% of a water-soluble polymer and 1-50wt% of a cationic polymer (para. 0003), wherein the water-soluble polymer is a cellulose ether (para. 0034) and the cationic polymer is an acrylamide copolymer (para. 0015, 0033).
Bhargava does not teach that the acrylamide polymer is in the form of an inverse emulsion.
Scott Bader Co. teaches inverse/water-in-oil emulsions of cationic acrylamide copolymers (p.1, lines 10-19), wherein the water-in-oil emulsions are easy to produce and handle, rapidly soluble, and efficient in thickening applications as compared to other solid or liquid thickeners (p.1, lines 46-48). Bhargava and Scott Bader Co. are analogous art because they are directed toward the same field of endeavor, namely thickening compositions.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the cationic acrylamide copolymer of Bhargava with the same copolymer in an inverse emulsion system for ease of production, handleability, and efficiency as thickeners.
Regarding Claims 4-5: Because the anionic copolymer is not positively claimed, the limitations of claims 4-5 are taken to be optional.
Regarding Claim 10: Bhargava teaches the cellulose ether is HEC, HPC, EHEC, CMC, CMHEC, HPHEC, MC, MHPC, MHEC, CMMC, HMCMC, HMHEC, HMHPC, HMEHEC, HMHPHEC, HMMC, HMMHPC, HMMHEC, HMCMMC, cationic HEC, or cationic HMHEC (para. 0035).
Regarding Claims 11-13: Bhargava teaches that the cellulose ether is preferably hydroxyethyl cellulose/HEC (para. 0035), which is optionally glyoxal-treated (para. 0036-0037).
Regarding Claim 14: Bhargava teaches that the cellulose ether is provided in the form of a powder (para. 0036).
Regarding Claim 18: Bhargava further teaches a dispersant (para. 0039).
Regarding Claim 19: Bhargava teaches that the rheology modifier composition is in the form of a liquid/solution (para. 0053).
Claims 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Bhargava et al (US 2015/0115500 A1) in view of Scott Bader Co. (GB 2077750 A) and Pabalan et al (US 2015/0183979 A1).
Bhargava and Scott Bader Co. teach all of the limitations of Claim 1, as set forth above. However, Bhargava and Scott Bader Co. are silent to the molecular weight of the acrylamide polymer.
Pabalan teaches a rheology modifier/composition for enhancing viscosity of a fluid (para. 0024) comprising a cationic acrylamide copolymer having a weight average molecular weight of 35,000-10,000,000 Daltons (para. 0118). This overlaps the claimed ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the molecular weight of the cationic acrylamide copolymer of Bhargava to an overlapping range and would have been motivated to do so since Pabalan teaches that a rheology modifier having a polymer of said molecular weight retains the viscosity when subjected to shear, heat, or high electrolyte concentration when employed in applications requiring viscous liquids (para. 0013, 0024, 0030-31).
Pabalan and Bhargava are analogous art because they are directed toward the same field of endeavor, namely rheology modifier compositions.
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Bhargava et al (US 2015/0115500 A1) in view of Scott Bader Co. (GB 2077750 A), Fuhr (Rheology of waterborne paints, 1 Dec 2017, UL Prospector), and Sau (US 5574127 A).
Bhargava and Scott Bader Co. teach all of the limitations of Claim 1, as set forth above. However, Bhargava and Scott Bader Co. are silent to the inclusion of an associative polymer.
Fuhr teaches that a combination of non-associative thickeners, such as cellulose ethers, and associative thickeners tailor the needs of a rheological profile for the best performance (p.3, Associative and non-associative thickeners). Fuhr and Bhargava are analogous art because they are directed toward the same field of endeavor, namely rheology modifiers in aqueous systems.
Sau teaches that associative polymer thickeners provide water-based systems with good film build, flow and leveling, and gloss (col. 2, lines 1-20). Sau further teaches that hydrophobically modified polyacetal-polyether polymers (col. 3, lines 50-55) in particular provide an improved combination of paint properties, such as stability, flow and leveling, film build, spatter resistance, and sag resistance (col. 4, lines 5-37). Sau and Bhargava are analogous art because they are directed toward the same field of endeavor, namely thickener compositions for aqueous systems.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add an associative polymer to the non-associative thickening composition of Bhargava to tailor the rheological profile of the system, as taught by Fuhr, and they would have further found it obvious to add the hydrophobically modified polyacetal-polyether polymer taught by Sau as said associative polymer to improve the stability, flow and leveling, film build, spatter resistance, and sag resistance of the composition.
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 1-6 and 8-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/278470 in view of Scott Bader Co. (GB 2077750 A).
Reference claim 1 teaches a rheology modifier composition containing 0.05-70wt% of an acrylamide polymer having a weight-average molecular weight of greater than 6 million Daltons, and 30-99.5wt% of a cellulose ether. Although reference claim 1 does not teach that the acrylamide polymer is in the form of an inverse emulsion, Scott Bader Co. teaches inverse/water-in-oil emulsions of cationic acrylamide copolymers (p.1, lines 10-19), wherein the water-in-oil emulsions are easy to produce and handle, rapidly soluble, and efficient in thickening applications as compared to other solid or liquid thickeners (p.1, lines 46-48). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the acrylamide polymer with the same polymer in an inverse emulsion system for ease of production, handleability, and efficiency as thickeners. This reads on instant claims 1, 6, and 8-9.
Reference claims 2-15 further limit reference claim 1 in such a manner that they read on instant claims 2-6 and 8-18.
This is a provisional nonstatutory double patenting rejection.
Claims 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/278593 in view of Scott Bader Co. (GB 2077750 A).
Reference claim 1 teaches a fluidized polymer suspension-based rheology modifier composition comprising 0.05-70wt% of an acrylamide polymer and 30-99.95wt% of a cellulose ether. Although reference claim 1 does not teach that the acrylamide polymer is in the form of an inverse emulsion, Scott Bader Co. teaches inverse/water-in-oil emulsions of cationic acrylamide copolymers (p.1, lines 10-19), wherein the water-in-oil emulsions are easy to produce and handle, rapidly soluble, and efficient in thickening applications as compared to other solid or liquid thickeners (p.1, lines 46-48). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the acrylamide polymer with the same polymer in an inverse emulsion system for ease of production, handleability, and efficiency as thickeners. This reads on instant claim 1.
Reference claims 2-19 further limit reference claim 1 in such a manner that they read on instant claims 2-19.
This is a provisional nonstatutory double patenting rejection.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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