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 with traverse of Invention I, claims 21-28 in the reply filed on 11/18/2025 is acknowledged. The traversal is on the ground(s) that the European examiner did not require restriction and that the claims are novel over prior art. This is not found persuasive because the examiner cannot comment on the quality of work done by an examiner in another Patent office which has different examining standards. Furthermore, as noted below claims 21-28 are rejected over prior art, and thus do not contain an inventive concept.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claims 22, 23, 25 and 26 are objected to because of the following informalities: Appropriate correction is required.
Claims 25 teaches “The noni-ionic emulsifier”, while parent claim 21 teaches “at least one non-ionic emulsifier”. Claim 25 should be amended to indicate that there is at least one non-ionic emulsifier.
Claims 26 teaches “The water soluble polymers”, while parent claim 21 teaches “at least one water soluble polymer”. Claim 26 should be amended to indicate that there is at least one water soluble polymer.
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 23, 27 and 28 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.
Claim 23 teaches “a composition X”. It is not clear if this is the same or different from the composition X taught in parent claim 21.
Claim 27 depends upon itself, thus the scope of the claim is not clear. Note also claim 28, which depend from claim 27.
Claim 28 teaches “wherein R1 , R2 and n have the meaning as defined, however neither claim 28 or parent claim 27 defines these terms.
Claim Rejections - 35 USC § 102
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claim(s) 21-28 are rejected under 35 U.S.C. 102(1) as being anticipated by Sandor US 2002/0062006).
Regarding claim 21, Sandor teaches a powder composition which comprises a polymer P which can be styrene-butadiene (see claims 9 and 14). The composition may comprise a drying assist of phenol sulfonic acid-formaldehyde condensate or naphthalene sulfonic acid formaldehyde condensate (claim 7 and claim 14). The composition may further comprise a non-ionic emulsifier at a level up 10% (claim 14, part iv). From the percentages in claim 14, the styrene-butadiene would be at levels from 38.5 to about 98.5%, which would render the 50 to 98.5% claimed instantly envisaged by one of ordinary skill in the art. Since the powder is formed by the dispersion method of claim 1, the styrene-butadiene would clearly be covered or embedded in the drying assist.
Regarding claims 22 and 23,Sandor teaches the non-ionic emulsifier is also added to the dispersion used to make the powder, and thus would meet being comprised in the composition X (0033).
Regarding claim 24, Sandor teaches the powder composition can contain from 0.5 to 15 wt% of an anti-caking agent (anti-blocking agent), such as silica or talc (0081-0082).
Regarding claim 25, Sandor teaches the use of ethoxylated alcohols (thus R2 is H) encompassing the values for n and R1.
Regarding claim 26, Sandor teaches the drying aid can be phenol sulfonic acid formaldehyde condensate (claim 7).
Regarding claims 27 and 28, as noted for claim 21, from the percentages in claim 14, the styrene-butadiene would be at levels from 38.5 to about 98.5%, which would render the 60 to 96% or 70 to 90% claimed instantly envisaged by one of ordinary skill in the art. Furthermore, the drying assist (equivalent to polymer B, can be phenol sulfonic acid formaldehyde and be at a level of up to 50% (claim 14). The non-ionic emulsifier can be at a level of up to 10% (claim 14). The anti-blocking agent can be at a level of up to 15%.
Applicant’s intended use in a subterranean formation does not distinguish.
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.
Claim(s) 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Sandor US 2002/0062006 .
Sandor is discussed above with respect to claims 21-26. To the extent that it is considered that Sandor does not teach the percentages in claims 27 and 28 with sufficient specificity, the percentages in Sandor overlap the current ranges, thus rendering the current ranges obvious to one of ordinary skill in the art (see MPEP 2144.05), and there would be a reasonable expectation of success in using these overlapping percentages.
Claim(s) 21-25 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Schmidtke ((WO 2018/224519) utilizing US 2020/0207671 as equivalent translation.
Regarding claims 21-23, Schmidtke teaches the formation of a re-dispersible powder composition which can comprise styrene-butadiene (0066), a water soluble co-polymer comprising an ethylenically unsaturated monomer having a sulfonic acid group and an ethylenically unsaturated carboxylic acid (see in particular 0084), and a polyethoxylated alcohol non-ionic emulsifier (0126-0133). It is noted that components can be added at different stages of the formation of the powder, such that co-polymer would cover or embed the styrene-butadiene polymer (0035-0039). While schmidtke does not specifically teach the percentages of the current claims, there are taught percentages which overlap the currently claimed ranges (see 0104, 0114, 0156), such that the use of the current percentages would be obvious to one of ordinary skill in the art, and there would be a reasonable expectation of success in using these overlapping percentages.
With regard to claim 24, an anti-blocking agent is taught as being used at a level of up to 4%.
With regard to claim 25, non-ionic emulsifiers within the scope of the claim are taught (0147 wherein R2 is H).
With regard to claim 27, overlapping ranges are disclosed as previously taught.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP C TUCKER whose telephone number is (571)272-1095. The examiner can normally be reached M-F 8-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexa Neckel can be reached at 571-272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745