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 of Group I, claims 1-6 in the reply filed on 05/06/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). As such, non-elected claims 7-14 are withdrawn from further consideration.
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.
Claim(s) 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Yun et al. KR 10-2021-0058714 A (as evidenced by its corresponding U.S. Patent Application Publication No.: 2022/0346379 A1) in view of Baum et al. U.S. Patent Application Publication No.: 2010/0186631 A1.
Yun et al. discloses a superabsorbent polymer capable of continuously and safely exhibiting an improved bacterial growth inhibitory property and a deodorant property without deterioration in the physical properties of the superabsorbent polymer, such as water retention capacity, absorption under pressure, etc., as well as a preparation method for the superabsorbent polymer, see abstract.
Yun et al.’s independent claim 1 reads as followed: “A superabsorbent polymer comprising: a base polymer powder comprising a crosslinked polymer of water-soluble ethylene-based unsaturated monomers having acidic groups of which at least a part are neutralized, and a polymerizable antimicrobial monomer; and a surface crosslinked layer formed on the base polymer powder, in which the crosslinked polymer is additionally crosslinked by a surface crosslinking agent; wherein the polymerizable antimicrobial monomer comprises one or more of guanidine acrylate and salts thereof.”. Please note that said polymerizable antimicrobial monomer reads directly on Applicant’s limitation of dependent claim 4.
Yun et al. thus discloses Applicant’s claimed invention in all aspects except that there does not seem to be a direct disclosure to the further inclusion of additional deodorant compounds, such as a sulfur-containing amino acid and a metal iodide salt as set forth in applicant’s independent claim 1.
Baum et al. discloses compounds for preventing ghost odours in various compositions, such as composition having biocidal properties, see abstract. Baum et al. directly discloses that potassium iodide (KI) and methionine (a sulfur-containing amino acid) are individually known in the art to be effective odour control agents, see TABLE 2 and independent claim 1.
It would have been obvious to one having ordinary skill in the art to use the disclosure of the secondary reference to Baum et al. as strong motivation to actually incorporate both potassium iodide (KI) and methionine (a sulfur-containing amino acid) as additional odour controlling agents into Yun et al.’s superabsorbent polymers which are taught to have both a bacterial growth inhibitory property and a deodorant property to further enhance the deodorant properties of Yun et al.’s superabsorbent polymers which is one of the Yun et al.’s desired outcomes for their invention.
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yun et al. KR 10-2021-0058714 A (as evidenced by its corresponding U.S. Patent Application Publication No.: 2022/0346379 A1) in view of Baum et al. U.S. Patent Application Publication No.: 2010/0186631 A1 and still further in view of JP 2005-312801 A.
Yun et al and Baum et al have been described above. Said combination further differ from applicant’s claimed invention in that there does not seem to be a direct teaching to the further inclusion of zirconium phosphate as an additional odour control agent.
JP 2005-312801 A discloses deodorant compositions wherein zirconium phosphate is disclosed to be a highly effective deodorant and is used in an amount from 0.1-25 parts of the composition, see paragraphs [0075]-[0076], [0098], and [0101]-[0102].
It would have been obvious to one having ordinary skill in the art to use the disclosure of JP 2005-312801 A as strong motivation to actually incorporate zirconium phosphate as an additional deodorant into Yun et al.’s superabsorbent polymers to further improve the deodorant properties which is one of the Yun et al.’s desired outcomes for their invention.
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yun et al. KR 10-2021-0058714 A (as evidenced by its corresponding U.S. Patent Application Publication No.: 2022/0346379 A1) in view of Baum et al. U.S. Patent Application Publication No.: 2010/0186631 A1 and still further in view of either Ishizaki et al. U.S. Patent Application Publication No.: 2007/0141338 A1 or Schroder et al. U.S. Patent Application Publication No.: 2016/0206772 A1.
Yun et al and Baum et al have been described above. Said combination further differ from applicant’s claimed invention in that there does not seem to be a direct teaching to the further inclusion of tannins as additional odour control agents.
Ishizaki et al. and Schroder et al. individually disclose polymeric absorbing materials (e.g. those made from acrylic acid and its salts, superabsorbent polymers etc.) that can employ tannins or tannic acid as an odor control agent, see paragraph [0121] of Ishizaki et al. and paragraph [0484] of Schroder et al..
It would have been obvious to one having ordinary skill in the art to use the disclosure of either Ishizaki et al. and Schroder et al. as strong motivation to further include a tannin compound (e.g. tannic acid) into Yun et al.’s superabsorbent polymers to further improve their odour control which is one of the Yun et al.’s desired outcomes for their invention. It is not inventive to merely follow the direct disclosure of a prior-art reference.
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.
Claim s 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of copending Application No. 18/842,571 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are deemed to be a subset of the co-pending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764
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