DETAILED ACTION
The communication dated 9/15/2025 has been entered and fully considered. Claim 1 is amended. Claim 13 is canceled. Claims 1-12 and 14-16 are pending.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Arguments/Amendments
Applicant argues the amended claim limitation of “is carried out within a time period not exceeding 24 hours counting from the addition of the solid particles of water-soluble polymer P1 to the aqueous solution M1” overcomes the prior art rejection.
Applicant's arguments filed 9/15/2025 have been fully considered but they are not persuasive.
The Examiner notes neither TANAKA, HUND, or SUGIWARA teach against the intended immediate use of the polymer solution. It would be obvious to one skilled in the arts to use the solution in a timely manner to avoid degradation of the solution or issues from transportation of the material.
In response to applicant's argument that prior art does not teach the immediate use of the formed solution, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Applicant argues that prior art, TANAKA and SUGIWARA, do not teach the addition of the polymer P1 into aqueous solution M1 as a solid.
Applicant's arguments filed 9/15/2025 have been fully considered but they are not persuasive.
BRUNGARDT also teaches the resultant polymer has active polymer solids that are added to the pulp slurry [0038]. BRUNGARDT further teaches the additive is most effective when the active polymer solids is controlled [0013]. It would be obvious to one skilled in the arts at the time of invention to substitute the polymer solution of TANAKA with the polymer solution of BRUNGARDT. One would be motivated to substitute the solutions based on the advantage of the most effective solution based on solids content as taught by BRUNGARDT. This teaches the addition of water soluble polymer in the form of solid to the papermaking furnish.
Applicant argues the immediate addition of the polymer to solution would result in advantageous unexpected results.
Applicant's arguments filed 9/15/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that the immediate use of the formed solution from M1 and P2 is advantageous, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues the amended claim limitation of “inverse emulsion form” further distinguishes the instant application, overcoming the Double Patenting rejection of the previous Action.
Applicant’s arguments, see REMARKS, filed 9/15/2025, with respect to claims 1-16 have been fully considered and are persuasive. The rejection of 6/16/2025 has been withdrawn.
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 1-5, 8, 11, 12, and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over TANAKA (JP2002212898A ESPACENET machine translation) in view of BRUNGARDT (US 20110155339 A1) and SUGIWARA (JP2009150009A ESPACENET machine translation).
For claim 1, TANAKA teaches a method of improving drainage for papermaking by using a polymer additive in a papermaking raw material (fiber) [0012]. This teaches “A method for producing a sheet of paper or cardboard from a fibrous suspension comprising: a) injecting a polymer P2 into the fibrous suspension”. The method includes forming the sheet of paper and drying the sheet through dewatering [0001]. This teaches the limitation of “b) forming a sheet of paper or cardboard, c) drying the sheet of paper or cardboard”. TANAKA teaches the polymer is formed by a HOFFMAN reaction before adding the polymer to the material [0001]. This teaches the limitation of “wherein the polymer P2 is prepared, before said a)”. TANAKA teaches the starting polymer is polyacrylamide [0020] that is water-soluble [0025] in an aqueous polymerization [0014].
TANAKA does not teach the polymer being solid. BRUNGARDT teaches a similar dry strength additive made by degrading acrylamide by a Hofmann reaction [0027]. BRUNGARDT also teaches the resultant polymer has active polymer solids that are added to the pulp slurry [0038]. BRUNGARDT further teaches the additive is most effective when the active polymer solids is controlled [0013]. It would be obvious to one skilled in the arts at the time of invention to substitute the polymer solution of TANAKA with the polymer solution of BRUNGARDT. One would be motivated to substitute the solutions based on the advantage of the most effective solution based on solids content as taught by BRUNGARDT. This teaches the limitation of “from a water-soluble polymer P1 in the form of solid particles, said P1 is a water-soluble polymer of at least one nonionic monomer selected from the group consisting of acrylamide, methacrylamide, N,N-dimethylacrylamide, and acrylonitrile”.
The polyacrylamide undergoes a Hoffman reaction in an aqueous solution form where the polyacrylamide is mixed with sodium hypochlorite and sodium hydroxide [0026] these being the alkali earth metal hypohalide and alkali earth metal hydroxide, respectively. This teaches the limitation of the instant claim of “wherein the polymer P2 is obtained by a reaction Re comprising adding the water- soluble polymer P1 in the inverse emulsion form to an aqueous solution M1 comprising of: (i) an alkali metal hydroxide, or an alkaline earth metal hydroxide, or mixtures thereof and (ii) an alkali metal hypohalide, or an alkaline earth metal hypohalide, or mixtures thereof”.
TANAKA teaches the reaction but does not teach how long the reaction takes. SUGIWARA also teaches the Hoffman reaction using acrylamide, sodium hydroxide, and sodium hypochlorite [0021]. The reaction also takes place within several tens of minutes to within a few minutes [0022]. The examiner understands this time range to be less than an hour and more than one minute based on the use of “minutes” as opposed to “hours”. This range is within the range of the instant claim. It would be obvious to one skilled in the arts at the time of invention to modify the art of TANAKA with the times of SUGIWARA to produce an effective polymerization. One would be motivated by the successful polymerization taught by SUGIWARA and the similarity of reaction composition. This teaches the limitation of “the range of the instant claim. the reaction Re has a reaction time of 10 seconds to 5 hours after the addition of the water-soluble polymer P1 in the inverse emulsion form”.
Regarding the time from formation of P2 and the introduction of P2 into the aqueous papermaking solution, the Examiner notes neither TANAKA, HUND, or SUGIWARA teach against the intended immediate use of the polymer solution. It would be obvious to one skilled in the arts to use the solution in a timely manner to avoid degradation of the solution or issues from transportation of the material. This teaches the limitation of “wherein said a) is carried out within a time period not exceeding 24 hours counting from the addition of the solid particles of water-soluble polymer P1 to the aqueous solution M1.”
For claim 2, TANAKA, BRUNGARDT and SUGIWARA teach the method according to claim 1, as above. TANAKA teaches the use of acrylamide in the range of 50 to 90 mol% [0009]. This teaches the limitation of “wherein in that the polymer P1 contains at least 50 mol% of at least one nonionic monomer selected from the group consisting of acrylamide, methacrylamide, N,N-dimethylacrylamide, and acrylonitrile”.
For claim 3, TANAKA, BRUNGARDT and SUGIWARA teach the method according to claim 1, as above. TANAKA teaches the use of a copolymer acrylamide [0012 and 0014]. This teaches the limitation of “wherein the polymer P1 is a homopolymer or a copolymer of acrylamide or of methacrylamide”.
For claim 4, TANAKA, BRUNGARDT and SUGIWARA teach the method according to claim 1, as above. TANAKA teaches the molar amount of hypohalous acid (sodium hypochlorite) and alkali (sodium hydroxide) relative to the molar amount of the base polymer (amide) [0021]. The examiner understands this percentage is the molar ratio of the hypohalide and hydroxide to acrylamide which are the alpha and beta coefficients respectively. TANAKA further teaches the alpha amount is 20 mol% to 120 mol% (equivalent to 0.2 to 1.2 as a ratio) and the beta amount is from 10 to 250 mol% (equivalent to 0.1 to 2.5 as a ratio) [0021]. Both ranges overlap that of the instant claim of “wherein, for the reaction Re, the coefficient Alpha = moles of hypohalide/moles of nonionic monomer of the polymer P1 is between 0.1 and 1.0 and the coefficient Beta = moles of hydroxide/moles of hypohalide is between 0.5 and 4.0”. See MPEP 2144.05(I).
For claim 5, TANAKA, BRUNGARDT and SUGIWARA teach the method according to claim 1, as above. TANAKA teaches the aqueous solution is made of an oily suspension [0014]. This teaches the limitation of “the solid particles of water-soluble polymer P1 are in the form of powder, microbeads, solid particles in an oily suspension, or solid particles in an aqueous suspension.”
For claim 8, TANAKA, BRUNGARDT and SUGIWARA teach the method according to claim 1, as above. TANAKA teaches the copolymer of acrylamide is diluted to 18% [0026]. The copolymer has a molar percent of acrylamide ranging from 50% to 90% (equivalent to a weight percent of 42 to 87% at a molar mass of 71.08g/mole for acrylamide and 97.16 g/mole for diallylamine) [0026]. The acrylamide fraction of the 18% copolymer solution ranges from 8 to 16wt% of the diluted solution. This value is within the range of the instant claim. This teaches the limitation of “wherein between 0.1 and 20% by weight of polymer P1, with respect to the weight of the aqueous solution M1, are added to the aqueous solution M1”. See 2144.05(I).
For claim 11, TANAKA and SUGIWARA teach the method according to claim 1, as above. TANAKA teaches the reaction product is neutralized to a pH range of 5 to 7.5 [0021]. This range is within the range of the instant claim of “wherein, before the injection into the fibrous suspension, the pH of the reaction mixture obtained by the reaction Re and containing the polymer P2 is adjusted by addition of acid between 0.5 and 7.5”.
For claim 12, TANAKA, BRUNGARDT and SUGIWARA teach the method according to claim 1, as above. TANAKA teaches the reaction product is added at before the fan pump [0022]. The examiner understands this is in the white water system. This meets the limitation of “wherein the polymer P2 or P3 is introduced into the white water and/or into the thick pulp and/or into the mixture formed by the white water and the thick pulp after homogenization of the fibrous suspension in the dilution pump”.
For claim 14, TANAKA, BRUNGARDT and SUGIWARA teach the method according to claim 1, as above. TANAKA teaches the reaction can be done from 30°C to 60°C [0021]. This range abuts the instant claim range. This teaches the limitation of “wherein the reaction Re is carried out at a temperature between 10 and 30 °C”. See 2144.05(I).
For claim 15, TANAKA, BRUNGARDT and SUGIWARA teach the method according to claim 1, as above. TANAKA teaches the copolymer of acrylamide is diluted to 18% [0026]. The copolymer has a molar percent of acrylamide ranging from 50% to 90% (equivalent to a weight percent of 42 to 87% at a molar mass of 71.08g/mole for acrylamide and 97.16 g/mole for diallylamine) [0026]. The acrylamide fraction of the 18% copolymer solution ranges from 8 to 16wt% of the diluted solution. This value is within the range of the instant claim. This teaches the limitation of “wherein between 0.3 and 10% by weight of polymer P1, with respect to the weight of the aqueous solution M1, are added to the aqueous solution M1”. See MPEP 2144.05(I).
For claim 16, TANAKA, BRUNGARDT and SUGIWARA teach the method according to claim 1, as above. TANAKA does not teach a reaction temperature within the claimed range. SUGIWARA also teaches the Hoffman reaction using acrylamide, sodium hydroxide, and sodium hypochlorite [0021]. SUGIWARA also teaches that the reaction time is dependent on the reaction temperature [0022]. SUGIWARA also teaches that the reaction can take a few minutes when completed at 20°C [0022]. SUGIWARA also teaches this condition is sufficient to produce an effective product [0022]. This teaches the limitation of “wherein the reaction Re is carried out at a temperature between 15 and 25°C”. It would be obvious to one skilled in the arts at the time of invention to modify the art of TANAKA with the temperatures of SUGIWARA to produce an effective polymerization. One would be motivated by the successful polymerization taught by SUGIWARA and the similarity of reaction composition.
Claims 6, 7, 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over TANAKA (JP2002212898A ESPACENET machine translation), BRUNGARDT (US 20110155339 A1) and SUGIWARA (JP2009150009A ESPACENET machine translation) in view of HUND (EP2840100A1 ESPACENET machine translation).
For claim 6, TANAKA, BRUNGARDT and SUGIWARA teach the method according to claim 1, as above. TANAKA teaches the polymerization makes the reactant into a gel [0025]. This is a gel polymerization. TANAKA does not teach the use of a powder. HUND teaches a polymer solution [0001] for use as a drainage agent for papermaking [0003] that uses acrylamide [0029] like TANAKA. HUND also teaches that the acrylamide can be polymerized before addition into papermaking [0069]. HUND teaches the use of the polymer as a powder as an alternative to an emulsion form [0068]. This teaches the limitation of “wherein the solid particles of water-soluble polymer P1 are in the form of a powder resulting from a gel polymerization or of microbeads resulting from inverse suspension polymerization”. HUND also teaches that the addition of the treatment agent from this process greatly improves the retention of fillers during the papermaking process [0071]. It would be obvious to one skilled in the arts at the time of invention to modify the inverse emulsion method of TANAKA with the method of HUND to produce an effective additive. One would be motivated by the improved additive retention taught by HUND and the common use for papermaking.
For claim 7, TANAKA, BRUNGARDT and SUGIWARA teach the method according to claim 6, as above. TANAKA teaches the use of dispersion polymerization [0014] in an aqueous solution. TANAKA does not teach the dispersion of polymer powder. HUND teaches a polymer solution [0001] for use as a drainage agent for papermaking [0003] that uses acrylamide [0029] like TANAKA. HUND also teaches that the acrylamide can be polymerized before addition into papermaking [0069]. HUND teaches the use of the polymer as a powder as an alternative to an emulsion form [0068]. HUND also teaches the powder can be dispersed by use of dispersants in solution [0077]. This teaches the limitation of This teaches the instant claim limitation of “wherein when the solid particles of water-soluble polymer P1 are in the form of powder which is dispersed in the aqueous solution M1 by a device for dispersing and grinding polymer, supplied by a circuit of the aqueous solution M1”. HUND also teaches that the addition of the treatment agent from this process greatly improves the retention of fillers during the papermaking process [0071]. It would be obvious to one skilled in the arts at the time of invention to modify the inverse emulsion method of TANAKA with the method of HUND to produce an effective additive. One would be motivated by the improved additive retention taught by HUND and the common use for papermaking.
For claim 9, TANAKA, BRUNGARDT and SUGIWARA teach the method according to claim 1, as above. TANAKA does not teach the addition of functional groups that include aldehyde. HUND teaches a polymer solution [0001] for use as a drainage agent for papermaking [0003] that uses acrylamide [0029] like TANAKA. HUND also teaches that the acrylamide can be polymerized before addition into papermaking [0069]. HUND teaches the use of a branching agent that includes glyoxal (an aldehyde) [0049]. This teaches the limitation of “wherein, at the end of the reaction Re, and before the injection into the fibrous suspension, the polymer P2 is functionalized with a compound comprising at least one aldehyde function to yield a polymer P3”. HUND also teaches that the addition of the treatment agent greatly improves the retention of fillers during the papermaking process [0071]. It would be obvious to one skilled in the arts at the time of invention to modify the inverse emulsion method of TANAKA with the method of HUND to produce an effective additive. One would be motivated by the improved additive retention taught by HUND and the common use for papermaking.
For claim 10, TANAKA, BRUNGARDT and SUGIWARA teach the method according to claim 9, as above. TANAKA does not teach the addition of functional groups that include aldehyde. HUND teaches a polymer solution [0001] for use as a drainage agent for papermaking [0003] that uses acrylamide [0029] like TANAKA. HUND also teaches that the acrylamide can be polymerized before addition into papermaking [0069]. HUND teaches the use of a branching agent that includes glyoxal (an aldehyde) [0049]. This teaches the limitation of “wherein the compound comprising at least one aldehyde function is glyoxal”. HUND also teaches that the addition of the treatment agent greatly improves the retention of fillers during the papermaking process [0071]. It would be obvious to one skilled in the arts at the time of invention to modify the inverse emulsion method of TANAKA with the method of HUND to produce an effective additive. One would be motivated by the improved additive retention taught by HUND and the common use for papermaking.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 STEPHEN M RUSSELL whose telephone number is (571)272-6907. The examiner can normally be reached Mon-Fri: 7:30 to 4:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.M.R./ Examiner, Art Unit 1748
/Abbas Rashid/ Supervisory Patent Examiner, Art Unit 1748