DETAILED ACTION
The finality of the previous office action has been vacated. The communication dated 4/28/2026 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 that prior art does not teach the addition of solid P1 into solution to M to precipitate P2.
Applicant’s arguments, see REMARKS, filed 4/28/2026, with respect to the rejection(s) of claim(s) 1-12 and 14-16 under 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of YOON (KR 20140018697 A).
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.
Claim 12 is 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 12 recites the limitation "P3" in reference to claim 1. There is insufficient antecedent basis for this limitation in the claim. The limitation of “P3” is introduced only in claim 9. For the sake of compact prosecution, the examiner understands the dependent claim 12 to depend on claim 9.
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 1-3, 5-8, 11, 12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over YOON (KR 20140018697 A ESPACENET Machine Translation) in view of GUO (CN 109112882 A ESPACENET Machine Translation) and LI (CN 103469681 A ESPACENET Machine Translation).
For claim 1, YOON teaches a method for preparing an eco-friendly dry strength agent for papermaking [ABSTRACT]. YOON teaches paper strength enhancer is added to pulp [0011] and made into paper by a conventional method [0105]. The examiner understands this to include the pulp is formed and dried to form a paper. YOON teaches the strength enhancer is made by adding together non-ionic acrylamide powder with sodium hypochlorite and sodium hydroxide [0067]. 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, b) forming a sheet of paper or cardboard, c) drying the sheet of paper or cardboard; wherein the polymer P2 is prepared, before said a) 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 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”. YOON further teaches the polymerization method is an oil-in-water type emulsion polymerization [0001]. YOON does not teach the reaction time between the P1 addition and the precipitation of P2. GUO teaches the same polymerization reaction of acrylamide powder, sodium hydroxide, and sodium hypochlorite [0008]. GUO further teaches the reaction takes place between 4.2 and 4.5 hours [0008]. This time range is within the claim range limitation of “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”. GUO teaches the advantage of the invention is the simplicity of the production method [0011]. It would be obvious to one skilled in the art to substitute the reaction time of GUO into the production method of YOON to produce a better strength additive. One would be motivated to combine the art based on the improved simplicity of the rection as taught by GUO.
YOON does not teach the time between P2 production and use. LI teaches the same polymerization reaction of acrylamide powder, sodium hydroxide, and sodium hypochlorite [0008]. LI teaches the product is transferred to a contain for later use after 15 minutes [0008]. The examiner understands this to mean the product is immediately ready to use after 15 minutes. This value is within the instant claim range 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.” LI teaches the use of the agent is for improving uniformity of fiber in the pulp [0010]. It would be obvious to one skilled in the arts to substitute the use method of LI into the method of YOON to improve the product performance. One would be motivated to combine the art based on the improved fiber uniformity from immediate use as taught by LI.
For claim 2, YOON, GUO, and LI teach the method according to claim 1, as above. YOON teaches the use of acrylamide in the range of 50 mol% [0079]. 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, YOON, GUO, and LI teach the method according to claim 1, as above. YOON teaches the use of a copolymer acrylamide [0005]. This teaches the limitation of “wherein the polymer P1 is a homopolymer or a copolymer of acrylamide or of methacrylamide”.
For claim 5, YOON, GUO, and LI teach the method according to claim 1, as above. YOON teaches the acrylamide is used in the form of powder [0018]. 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 6, YOON, GUO, and LI teach the method according to claim 1, as above. YOON teaches the polymer P1 is a powder made from an oil-in-water emulsion polymerization [0001]. 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”.
For claim 7, YOON, GUO, and LI teach the method according to claim 6, as above. YOON teaches the polymer P1 is a powder made from an oil-in-water emulsion polymerization [0001]. YOON further teaches the polymer is dissolved into deionized water by stirring and the sodium hydroxide and sodium hypochlorite [0067]. 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”.
For claim 8, YOON, GUO, and LI teach the method according to claim 1, as above. YOON teaches the polyacrylamide is used at 10 to 40% solution [0018]. This overlaps the instant claim range 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 YOON, GUO, and LI teach the method according to claim 1, as above. YOON teaches the pH is adjusted from 2 to 3 [0067]. 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 YOON, GUO, and LI teach the method according to claim 1, as above. GUO teaches the polymer is added to remove filler from the white water [0004]. The examiner understands the polymer is introduced to whitewater. 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 15, YOON, GUO, and LI teach the method according to claim 1, as above. YOON teaches the polyacrylamide is used at 10 to 40% solution [0018]. This range abuts the instant claim range 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).
Claims 4 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over YOON (KR 20140018697 A ESPACENET Machine Translation), GUO (CN 109112882 A ESPACENET Machine Translation) and LI (CN 103469681 A ESPACENET Machine Translation) in view of TANAKA (JP2002212898A ESPACENET machine translation).
For claim 4, YOON, GUO, and LI teach the method according to claim 1, as above. YOON does not teach the alpha or beta. TANAKA teaches the same reaction of acrylamide with sodium hydroxide and sodium hypochlorite [0009]. 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). TANAKA teaches the advantage of the invention is the improved drainage of the product. It would be obvious to one skilled in the art to substitute the method of TANAKA into the method of YOON to improve the drainage quality of strength additive. One would be motivated to combine the art based on the improved drainage as taught by TANAKA.
For claim 14, YOON, GUO, and LI teach the method according to claim 1, as above. NEITHER YOON, GUO or LI teach a low reaction temperature. TANAKA teaches the same reaction of acrylamide with sodium hydroxide and sodium hypochlorite [0009]. TANAKA teaches the reaction can be done from 30°C to 60°C [0021]. This range overlaps other prior art ranges and 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). TANAKA teaches the advantage of the invention is the improved drainage of the product. It would be obvious to one skilled in the art to substitute the method of TANAKA into the method of YOON to improve the drainage quality of strength additive. One would be motivated to combine the art based on the improved drainage as taught by TANAKA.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over YOON (KR 20140018697 A ESPACENET Machine Translation), GUO (CN 109112882 A ESPACENET Machine Translation) and LI (CN 103469681 A ESPACENET Machine Translation) in view of HUND (EP2840100A1 ESPACENET machine translation).
For claim 9, YOON, GUO, and LI teach the method according to claim 1, as above. YOON 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 YOON. 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 YOON 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, YOON, GUO, and LI teach the method according to claim 9, as above. YOON 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 YOON. 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 YOON 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.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over YOON (KR 20140018697 A ESPACENET Machine Translation), GUO (CN 109112882 A ESPACENET Machine Translation) and LI (CN 103469681 A ESPACENET Machine Translation) in view of SUGIYAMA (JP 2009150009 A ESPACENET machine translation).
For claim 16, YOON, GUO, and LI teach the method according to claim 1, as above. NEITHER YOON, GUO or LI teach a low reaction temperature. SUGIYAMA also teaches the Hoffman reaction using acrylamide, sodium hydroxide, and sodium hypochlorite [0021]. SUGIYAMA also teaches that the reaction time is dependent on the reaction temperature [0022]. SUGIYAMA also teaches that the reaction can take a few minutes when completed at 20°C [0022]. SUGIYAMA 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 YOON with the temperatures of SUGIYAMA to produce an effective polymerization. One would be motivated by the successful polymerization taught by SUGIYAMA and the similarity of reaction composition.
Conclusion
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
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