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 .
Preliminary amendment filed 1/29/2024 is made of record. Claims 1-2, 4-5, 7-8, 10-11 and 13 are amended; and claims 15-17 are added. Accordingly, claims 1-17 are currently pending in the application.
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-10 and 13-17, drawn to superabsorbent polymer. It is noted that claims 13-14 drawn to article comprising superabsorbent polymer is kept with the superabsorbent polymer, since no materially significant limitations are recited in claims 13-14 that would patentably distinguish the article from superabsorbent polymer of claims 1-10 and 15-17.
Group II, claim(s) 11-12, drawn to method of preparing a superabsorbent polymer.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: Groups I to II lack unity of invention because even though the inventions of these groups require the technical feature of superabsorbent polymer comprising a crosslinked polymer of acrylic acid-based monomer including acidic groups, at least part of which is neutralized, a polymerizable antibacterial monomer of formula I and a crosslinking agent, this technical feature is not a special technical feature as it does not make a contribution over the prior art of Nogi et al (US 2012/0157650 A1) in view of Kim et al (J. Agric. Food Chem, vol. 52, pages 7480-7483, Year: 2004. Specifically, Nogi et al disclose in example 1, a water absorbent resin obtained by polymerizing aqueous acrylic acid salt solution partially neutralized at 75% and polyethylene glycol diacrylate as an internal crosslinking agent (paragraphs 0200-0202). Nogi et al are silent with respect to polymerizable antibacterial monomer. However, Kim et al teach antimicrobial activity (such as antibacterial activity of p-hydroxyphenyl acrylate derivatives (abstract, page 7841, col. 2, 1st full paragraph) which has the following structure:
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. Therefore, in light of the teachings in Kim et al, it would have been obvious to one skilled in art prior to the filing of present application to include the polymerizable antibacterial monomer, of Kim et al, in the water absorbent resin, of Nogi et al, for above mentioned advantages.
During a telephone conversation with Lingyan Wang on 6/22/2026 a provisional election was made WITHOUT traverse to prosecute the invention of group I, claims 1-10 and 13-17. Affirmation of this election must be made by applicant in replying to this Office action. Claims 11-12 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claim 5 is objected to because of the following informalities: Claim 5 recites “R1 to R3 are as defined in formula 1” (line 15). Applicant is advised to include what R1 to R3 represent independently in claim 5 without reference to formula 1, since it creates ambiguity as to which formula 1 is being referred to, since claim 2 also further limits the scope of R1 to R3 of formula 1. Appropriate correction and/or clarification are required.
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 1-5, 7-10 and 13-17 are 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 1 recites “polymerizable antibacterial monomer represented by formula I …
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… A is an aromatic ring having 6 to 60 carbon atoms, wherein … aromatic ring are each independently unsubstituted or substituted”. While the antibacterial monomer represented by formula I, includes an aromatic ring “A” comprising “OH” as a substituent, the wherein clause indicates it could be unsubstituted. It is not clear if the “OH” group on the aromatic ring “A” is optional or required since unsubstituted includes an aromatic ring “A” without any OH group. Hence, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art prior to the filing of present application.
Claims 2-5, 7-10 and 13-17 are subsumed by this rejection because of the dependence either directly or indirectly on independent claim 1.
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.
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 1-10 and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Nogi et al (US 2012/0157650 A1) in view of Kim et al (J. Agric. Food Chem, vol. 52, pages 7480-7483, Year: 2004).
Regarding claims 1-6 and 15, Nogi et al disclose a polyacrylic acid (salt)-type water absorbent resin (abstract) which reads on superabsorbent polymer in present claim 1. See example 1, wherein aqueous acrylic acid salt solution partially neutralized at 75% (i.e., reads on acrylic acid-based monomer including acidic groups, at least part of which is neutralized in present claim 1), and polyethylene glycol diacrylate as an internal crosslinking agent (i.e., reads on crosslinking agent in present claim 1) are polymerized to obtain a hydrous gel like crosslinked polymer, which is crushed and classified to obtain water absorbent resin particles (paragraphs 0200-0202).
Nogi et al are silent with respect to polymerizable antibacterial monomer.
However, Nogi et al in the general disclosure teach that additives such as antibacterial agent may be added (paragraph 0196). Additionally, Kim et al teach antimicrobial activity of p-hydroxyphenyl acrylate derivatives (abstract). Antimicrobial functions are requested for hygienic articles. Phenols damage the cytoplasmic membrane of microbial cells to cause progressive leakage of intracellular materials and finally loss of structural organization and integrity (page 7480, col. 1, 1st and 2nd full paragraphs). H5 (i.e., p-hydroxyphenyl acrylate) exhibits antibacterial activity. The vinyl group linked to an electron withdrawing group, which is next to a resonance increasing group such as phenyl ring is reported to be responsible for the antimicrobial activity of H5. The phenol moiety of H5 could also contribute to the antimicrobial activity, because phenol kills microbial cells to retards cell growth, by damaging the cell membrane to cause leakage of cellular components (page 7481, col. 2, 1st full paragraph). It is noted that p-hydroxyphenyl acrylate is represented by formula:
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(i.e., reads on monomer of formula 1, wherein R1, R2 and R3 = hydrogen in present claims 1 and 2; L = single bond in present claims 1 and 3; A = aromatic ring in present claim 1, benzene ring in present claim 4, monomer of formula 1-1 in present claim 5, wherein R1, R2, R3 = hydrogen, L’ = single bond and a = 0; monomer of formula
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in claim 6; and substituent is hydroxy in present claim 15). Case law holds that selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Therefore, in light of the teachings in Kim et al, case law and given that Nogi et al contemplate including an antibacterial agent, it would have been obvious to one skilled in art prior to the filing of present application to include the monomer, of Kim et al, exhibiting antibacterial activity, in the water absorbent resin, of Nogi et al, absent evidence to the contrary.
Regarding claim 7, it is Office’s position that polymerizable antibacterial monomer amount is a result-effective variable (MPEP 2144.5) since the amount used clearly affects the antibacterial property of the water absorbent resin of Nogi et al. Hence, the choice of a particular amount of polymerizable antibacterial monomer (such as the amount in present claims) is a matter of routine experimentation and would have been well within the skill level of, and thus obvious to, one of ordinary skill in the art.
Regarding claims 8-9, given that polymerizable antibacterial monomer of Kim et al is the same as that in present invention and claims, one skilled in art prior to the filing of present application would have a reasonable basis to expect the water absorbent resin, of Nogi et al in view of Kim et al, to exhibit antibacterial property against gram-negative bacteria such as Proteus mirabilis or Escherichia coli and gran-positive bacteria such as Enterococcus faecalis, absent evidence to the contrary.
Regarding claim 10, see example 1, of Nogi et al, wherein the water absorbent resin exhibits a CRC of 35 g/g (paragraph 0202). The CRC is water absorption rate after water absorbent resin is freely swollen in 0.9 mass% saline solution for 30 minutes (paragraph 0066).
Regarding claims 13-14, Nogi et al teach that it is preferable to use the water absorbent resin for an absorbing article such as paper diaper, a sanitary napkin, an incontinence pad or the like (paragraph 0197).
Regarding claim 16, see example 1, wherein the acrylic acid-based monomer comprises partially neutralized acrylic acid sodium salt (paragraph 0201) which reads on acrylic acid and a monovalent alkyl metal salt in present claim 16.
Regarding claim 17, see example 1, wherein polyethylene glycol diacrylate is used as the inner crosslinking agent (paragraph 0201).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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