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 .
Reissue Applications
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. This application, filed April 18, 2023, is a reissue of U.S. Patent 10,982,391 (hereafter the '391 patent), which issued from U.S. application Serial No. 16/305,967 (the ‘967 application) with claims 1-18 on April 20, 2021.
Rejections Overcome
The rejection of claims 27 and 31 under 35 USC 251 for new matter, and the rejection of claim 25 under 35 USC 112(b) as being indefinite have been overcome by Applicant’s amendment of claims 27 and 31, and cancelation of claim 25.
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.
Claims 1-3, 5, 7, 9-11, 14, 16, 17, 19, 20, 22, 26, 28 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over JP 62-125096 to Yoshioka et al (hereinafter “Yoshioka”) in combination with WO 2015/038905 A1 to Zhu et al (hereafter “Zhu”). The English translation attached to Yoshioka mailed with the Office Action of 08/04/2025 is hereinafter referred to below. The translation does not have page numbers, but is a total of 18 pages. The translation page numbers are hereinafter referred to as first, second, third, etc.
With respect to claims 1, 2, 11, 17, 19, 20 and 22, Yoshioka teaches a method of improving filler retention in a papermaking process, wherein the method also provides an excellent paper strength-enhancing effect (see the fourth and seventh pages). The method comprises treating raw pulp, i.e., instant paper sheet precursor, with a combination of an amphoteric polyacrylamide copolymer and an aluminum compound such as polyaluminum chloride or polyaluminum hydroxide (see the sixth and seventh pages).
Yoshioka teaches that the aluminum compound is dosed at preferably 0.05 to 1% by weight of the dry weight of the pulp, i.e., dry fibers, in the papermaking raw material (see the second and seventh pages). The 0.05 to 1% by weight is equivalent to 0.5 to 9.1 kg/ton, which overlaps the claimed range. In fact, for example, in Yoshioka’s Example 2, the “PAC”, i.e., polyaluminum chloride, content is 0.1% or 0.12%. i.e., 0.9 kg/ton or 1.8 kg/ton, respectively.
Yoshioka teaches that the amphoteric polyacrylamide copolymer is dosed at preferably 0.1 to 3% by weight of the dry weight of the pulp, i.e., dry fibers, in the papermaking raw material (see the second and sixth pages). The 0.1 to 3% by weight is equivalent to 0.9 to 27.2 kg/ton, which closely overlaps the claimed range of about 3 to about 30 kg/ton. Yoshioka’s Example 2 uses 0.4%, i.e., 3.6 kg/ton, of the amphoteric polyacrylamide copolymer.
Yoshika teaches that the combination of an amphoteric polyacrylamide copolymer and aluminum compound shows a tremendous synergistic effect (see eighth page). Yoshioka teaches that other papermaking additives can be added in the usual manner (see seventh page). Yoshioka’s invention does not in any way preclude the use of other papermaking additives (see seventh page).
Yoshioka differs from the instant claims in not teaching further treating the pulp with a cationic dialdehyde-modified polyacrylamide copolymer.
Zhu teaches a papermaking composition for addition to pulp, wherein the composition includes a strengthening agent comprising a dialdehyde-modified polyacrylamide and a polyacrylamide (see ¶¶ 0008-0009, 0024, 0037 and 0071-0075). The dialdehyde-modified polyacrylamide-type strengthening agent is selected from the group consisting of cationic dialdehyde-modified polyacrylamide-type strengthening agents, anionic dialdehyde-modified polyacrylamide-type strengthening agents and amphoteric dialdehyde-modified polyacrylamide-type strengthening agents (see ¶ 0009). The polyacrylamide strengthening agent is selected from the group consisting of cationic polyacrylamide copolymer strengthening agents, anionic polyacrylamide copolymer strengthening agents and amphoteric polyacrylamide copolymer strengthening agents (see ¶¶ 0009 and 0034).
Zhu teaches that the dosage of the sum of the dialdehyde-modified polyacrylamide-type strengthening agent(s) and the polyacrylamide-type strengthening agent(s) relative to the dry fiber in the pulp slurry is between 0.1 kg/ton dry fiber and 10 kg/ton dry fiber, e.g., between 1 kg/ton dry fiber and 10 kg/ton dry fiber (see ¶¶ 0071 and 0094).
Zhu teaches that the weight ratio between the dialdehyde-modified polyacrylamide and the polyacrylamide can be suitably selected by one skilled in the art according to the strength properties of the desired paper (see ¶ 0044). In particular, Zhu teaches that in order to effectively increase ash retention in the finished paper and/or paper strength, the dialdehyde-modified polyacrylamide-type strengthening agent and amphoteric polyacrylamide strengthening agent can have a ratio of solid contents such as 1:99-99:1, e.g., 10:90-90:10, e.g., 30:70-70:30, e.g., 40:60-60:40, e.g., 50:50 (see ¶ 0044). In fact, Zhu’s Example 2 (¶¶ 00144-00145) uses a 1:1 weight ratio of dialdehyde-modified polyacrylamide copolymer, i.e., GPAM copolymer solution 1, and amphoteric polyacrylamide copolymer 1, which each have a molecular weight of 1.2 million Daltons (see ¶¶ 00116 and 00133-00134). Thus, Zhu’s Example 2 has a molar ratio of 50:50 as per claim 1 and its dependent claims, and claim 22.
Zhu further teaches that the paper-making composition may contain other chemical aids for paper-making (see ¶ 0046).
Zhu teaches that its composition containing the dialdehyde-modified polyacrylamide and the polyacrylamide provides the advantages of substantially increased ash retention and/or increased strength of the paper (see ¶¶ 0012 and 0067-0068).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further included a cationic dialdehyde-modified polyacrylamide copolymer in Yoshioka’s pulp treatment that already uses a combination of an amphoteric polyacrylamide copolymer and an aluminum compound because Yoshioka specifically teaches that the treatment does not preclude the use of other paper-making additives, and the use of a combination of a dialdehyde-modified polyacrylamide and a polyacrylamide, e.g., an amphoteric polyacrylamide copolymer, provides the advantages of substantially increased ash retention and/or increased strength of the paper, as taught by Zhu.
Alternatively, Zhu differs from the instant claims in not teaching that its papermaking composition further comprises a polyaluminum salt. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included Yoshioka’s aluminum compound, such as polyaluminum chloride or polyaluminum hydroxide, in Zhu’s paper-making composition because Zhu specifically teaches that other chemical aids can be contained in the composition, and so as to take advantage of the fact that the combination of an amphoteric polyacrylamide copolymer (already present in Zhu’s composition) and an aluminum compound provides for a synergistic effect, improves filler retention and provides for an excellent paper strength-enhancing effect, as taught by Yoshioka. Indeed, Zhu teaches use of fillers (see ¶¶ 0075 and 0083).
With respect to claim 3, Zhu teaches that the dialdehyde-modified polyacrylamide copolymer comprises acrylamide and one or more cationic monomer(s) derived from a monomer selected from diallyldimethylammonium chloride, N-(3-dimethylaminopropyl)methacrylamide, N-(3-dimethylaminopropyl)acrylamide, trimethyl-2-methacroyloxyethylammonium chloride, trimethyl-2-acroyloxyethylammonium chloride, methylacryloxyethyldimethyl benzyl ammounium chloride, acryloxyethyldimethyl benzyl ammounium chloride, (3-acrylamidopropyl)trimethylammonium chloride, (3-methacrylamidopropyl)trimethylammonium chloride, (3-acrylamido-3-methylbutyl)trimethylammonium chloride 2-vinylpyridine, 2-(dimethylamino)ethyl methacrylate, and 2-(dimethylamino)ethyl acrylate (see ¶¶ 0018 and 0024).
With respect to claim 5, Zhu teaches that the dialdehyde of the dialdehyde-modified polyacrylamide copolymer can be glyoxal, malonaldehyde, succinic aldehyde or glutaraldehyde (see ¶ 0023).
With respect to claim 7, Zhu teaches that the amphoteric polyacrylamide polymer comprises acrylamide and a cationic monomer which can be one or more selected from the group consisting of diallyldimethylammonium chloride, N-(3-dimethylaminopropyl)methacrylamide, N-(3-dimethylaminopropyl)acrylamide, trimethyl-2-methacroyloxyethylammonium chloride, trimethyl-2-acroyloxyethylammonium chloride, methylacryloxyethyldimethyl benzyl ammounium chloride, acryloxyethyldimethyl benzyl ammounium chloride, (3-acrylamidopropyl)trimethylammonium chloride, (3-methacrylamidopropyl)trimethylammonium chloride, (3-acrylamido-3-methylbutyl)trimethylammonium chloride 2-vinylpyridine, 2-(dimethylamino)ethyl methacrylate, and 2-(dimethylamino)ethyl acrylate (see ¶¶ 0018, 0034-0035 and 0037).
Likewise, Yoshioka teaches that the amphoteric polyacrylamide polymer contains acrylamide and a cationic monomer such as di- or tri-alkylaminoalkyl acrylates, di- or tri-alkylaminoalkyl methacrylates, di- or tri-alkylaminoalkyl acrylamides, di- or tri-alkylaminoalkyl methacrylamides, etc. (See the fifth page).
With respect to claims 9 and 29, Zhu teaches that the dialdehyde-modified polyacrylamide copolymer has a weight average molecular weight of 100,000-10,000,000 Daltons, i.e., 100 kDa to 10,000 kDa, as here claimed (see ¶ 0029).
With respect to claims 10 and 29, Yoshioka teaches that the amphoteric acrylamide polymer has a molecular weight of preferably 200,000 to 3,000,000, i.e., 200 kDa to 3,000 kDa, as here claimed (see the sixth page). Likewise, Zhu teaches that its polyacrylamide polymer has a weight average molecular weight of 100,000-10,000,000 Daltons, i.e., 100 kDa to 10,000 kDa, as here claimed.
With respect to claims 14 and 16, as noted above, it would have been obvious to have included Yoshioka’s polyaluminum compound in Zhu’s paper-making composition. Thus, the polyaluminum compound, dialdehyde-modified polyacrylamide copolymer and amphoteric polyacrylamide copolymer are combined into a composition prior to being delivered to the pulp, and thus, are delivered simultaneously to the pulp.
Alternatively, Yoshioka teaches that the amphoteric polyacrylamide copolymer and aluminum compound can be added in any order, i.e., individually, or they can be delivered simultaneously (see the last ¶ on the seventh page). Zhu’s paper-making additive is a composition containing dialdehyde-modified polyacrylamide copolymer and amphoteric polyacrylamide copolymer. Thus, it would have been obvious for a skilled artisan to have added Zhu’s paper-making additive composition and Yoshioka’s aluminum compound individually or simultaneously, as per the teachings of Yoshioka. Further, any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See MPEP § 2144.04(IV)(C).
With respect to claim 26, Zhu teaches that the paper-making composition has a pH value of 6.0 or above, e.g., 6.5-13.0, e.g., 7.0-12.0, e.g., 7.5-11.0, e.g., 8.0-10.0 (see ¶ 0048), each of which overlaps and thus, renders obvious the claimed pH range of about 6 to about 9. See MPEP 2144.05.I. In fact, the compositions in Zhu’s Examples 1, 2, 4, 5 and 6 have a respective pH of 6.8, 7.5. 7.8, 8.5 and 8.1, as here claimed (see ¶¶ 00142, 00145, 00149, 00151, and 00153).
With respect to claim 28, Zhu teaches that the paper-making composition can be in the form of a solution or a dispersion, and is added to pulp forming a suspension (see ¶¶ 0066, 0075 and 0078).
Claims 13 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Yoshioka and Zhu as applied to claims 1-3, 5, 7, 9-11, 14, 16, 17, 19, 20, 22, 26, 28 and 29 above, and further in view of WO 97/11029 A2 to Dulko (hereinafter “Dulko”).
Yoshioka and Zhu, as relied upon for the reasons stated above in Rejection No. 1, differ from claims 13 and 21 in that Yoshioka does not specifically teach the aluminum compound, e.g., polyaluminum chloride, has a basicity of from about 40% to 83%.
Dulko teaches that polyaluminum chlorides and polyaluminum chlorosulfates are compounds used as flocculants and coagulants for water and wastewater treatment, and are also used in the production of paper (see p. 1, lines 7-12). Dulko teaches a process for production of polyaluminum chlorides and polyaluminum chlorosulfates (see abstract).
Dulko prepares the polyaluminum chlorides and polyaluminum chlorosulfates with basicities of greater than 70% using, as starting material, basic aluminum chlorides and basic aluminum chlorosulfates of low basicity (25% or less). The polyaluminum chlorides and polyaluminum chlorosulfates produced remain fluid, i.e., they do not coalesce into a gel, and the formation of calcium sulfate precipitates can be avoided. Further, they can be produced without the addition of heat, thus avoiding the formation of undesirable byproducts. As a result, the process is particularly well-suited to large scale industrial applications. (See p. 2, lines 19-26).
In Example 8, Dulko prepares polyaluminum chloride having a basicity of 83% (see p. 20, lines 12-24). In Example 6, Dulko prepares polyaluminum chlorosulfate having a basicity of 50% (see p. 19, lines 20-29).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used Dulko’s polyaluminum salt having a basicity of, e.g., 83% or 50%, as the aluminum compound in the method and composition of Yoshioka and Zhu because Dulko teaches that its polyaluminum salt, i.e., polyaluminum chlorides or polyaluminum chlorosulfates, can be used in the production of paper, and because the polyaluminum chlorides or polyaluminum chlorosulfates can be produced for large scale industrial applications, as taught by Dulko.
Claims 27 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Yoshioka and Zhu as applied to claims 1-3, 5, 7, 9-11, 14, 16, 17, 19, 20, 22, 26, 28 and 29 above, and further in view of U.S. Patent Application Publication 2019/0276578 to Heitaniemi et al (hereinafter “Heitaniemi”).
The following teachings in Heitaniemi are supported by Heitaniemi’s foreign priority document filed 12/16/2016, which is present (in English) in Heitaniemi’s U.S. application 16/462,560. Accordingly, Heitaniemi has an effectively filed date of 12/16/2016.
Applicant cannot rely upon their certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216. Accordingly, instant claims 27 and 31 have an effective filing date of 05/31/2017, i.e., later than Heitaniemi’s effectively filed date of 12/16/2016.
Yoshioka and Zhu, as relied upon for the reasons stated above in Rejection No. 1, differ from claims 27 and 31 in not specifically teaching that the pulp has a particle charge density greater than about 500 µeq/L.
Heitaniemi teaches that polymers, such as polyacrylamide, are used in paper and board making for improving the drainage during web formation. The challenge in drainage is to combine good initial flocculation with dense floc structure. Problems in flocculation lead to reduced web quality and problems in floc structure reduce water drainage in press dewatering, which increases the drying demand in the succeeding drying steps, which thus may become the limiting part for the paper machine productivity. (See ¶ 0002).
Heitaniemi surprisingly found out that clear improvements in drainage and dewatering are obtained with a polymer composition, which is obtained by polymerizing first and second polymers that are copolymers of (meth)acrylamide (see ¶¶ 0023-0024). In use for paper and board manufacture, the polymer composition is added to an aqueous fiber-containing medium, where the liquid phase of the aqueous medium has a cationic demand >300 μeq/L, sometimes even >500 μeq/L (see ¶ 0056).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included Heitaniemi’s polymer in the pulp of Yoshioka and Zhu so as to improve drainage during web formation and permit treatment of a cationic demand >500 μeq/L, as taught by Heitaniemi.
Claims 30 and 32 rejected under 35 U.S.C. 103 as being unpatentable over Zhu in view of U.S. Patent Application Publication 2012/0103549 to Ban (hereinafter “Ban ‘549”), U.S. Patent Application Publication No. 2012/0073773 to Jehn-Rendu et al (hereafter “Jehn-Rendu”), U.S. Patent Application Publication No. 2014/0284011 to Krapsch et al (hereafter “Krapsch”) and U.S. Patent Publication 2011/0126995 to Turumen et al (hereinafter “Turumen”).
With respect to claims 30 and 32, Zhu teaches a papermaking composition for addition to pulp, wherein the composition includes a strengthening agent comprising a dialdehyde-modified polyacrylamide and a polyacrylamide (see ¶¶ 0008-0009, 0024, 0037 and 0071-0075). The dialdehyde-modified polyacrylamide-type strengthening agent can be an anionic dialdehyde-modified polyacrylamide-type strengthening agents (see ¶ 0009). The polyacrylamide strengthening agent can be a cationic polyacrylamide copolymer strengthening agent (see ¶¶ 0009 and 0034).
Zhu teaches that the dosage of the sum of the dialdehyde-modified polyacrylamide-type strengthening agent and the polyacrylamide-type strengthening agent relative to the dry fiber in the pulp slurry is between 0.1 kg/ton dry fiber and 10 kg/ton dry fiber, e.g., between 1 kg/ton dry fiber and 10 kg/ton dry fiber (see ¶¶ 0071 and 0094).
Zhu teaches that the weight ratio between the dialdehyde-modified polyacrylamide and the polyacrylamide can be suitably selected by one skilled in the art according to the strength properties of the desired paper (see ¶ 0044). In particular, Zhu teaches that in order to effectively increase ash retention in the finished paper and/or paper strength, the dialdehyde-modified polyacrylamide-type strengthening agent and amphoteric polyacrylamide strengthening agent can have a ratio of solid contents such as 1:99-99:1, e.g., 10:90-90:10, e.g., 30:70-70:30, e.g., 40:60-60:40, e.g., 50:50 (see ¶ 0044). In fact, Zhu’s Example 2 (¶¶ 00144-00145) uses a 1:1 weight ratio of dialdehyde-modified polyacrylamide copolymer, i.e., GPAM copolymer solution 1, and amphoteric polyacrylamide copolymer 1, which each have a molecular weight of 1.2 million Daltons (see ¶¶ 00116 and 00133-00134).
Zhu further teaches that the paper-making composition may contain other chemical aids for paper-making (see ¶ 0046).
Zhu differs from claims 30 and 32 in not teaching that the papermaking composition further comprises a polyaluminum salt in an amount of about 0.5 kg/ton of dry fibers to about 20 kg/ton of dry fibers.
Ban ‘549 teaches an enhanced additive system for improving wet-end drainage and ash retention in papermaking using ionic crosslinked polymeric microparticles (see ¶ 0006). In particular, a coagulant, organic flocculant, or both, can be added to the pulp, as sequentially, simultaneously, or as a blend with the polymeric microparticles. The coagulant can be a cationic coagulant component, which can be or include a cationic organic polymer coagulant, an inorganic cationic coagulant, or combinations thereof. Cationic organic polymer coagulants can be, for example, a copolymer of vinylamine and acrylamide, i.e., polyacrylamide copolymer. Inorganic cationic coagulants which can be used can be, or include, inorganic cationic chemicals, e.g., aluminum sulfate (alum), polyaluminum chloride (PAC) and polyaluminum sulfate (PAS) (¶ 0042), each of which reads on the claimed polyaluminum salt.
Jehn-Rendu teaches a process for the production of paper, board and cardboard having high dry strength comprising the addition of (a) at least one trivalent cation in the form of a salt, (b) at least one water-soluble cationic polymer and (c) at least one water-soluble amphoteric polymer to the paper stock (see Abstract and claim 1). Examples of trivalent cation salt that may be used are polyaluminum chloride, aluminum sulfate or aluminum lactate (see ¶¶ 0035-0036).
Krapsch teaches that strength polymers (also referred to as strength resins, strength aids, strength additives and the like) are extensively utilized in paper manufacture. It is often distinguished between dry strength polymers and wet strength polymers, though dry strength polymers often impart a certain degree of wet strength to the paper, and vice versa. Today, the most common types of synthetic dry and/or wet strength polymers are based on polyvinylamine or polyacrylamide. (See ¶ 0004).
Krapsch’s paper-making process includes adding a dry and/or wet strength polymer to the cellulosic material (see ¶ 0023). Krapsch further teaches that a retention aid, such as polyaluminum chloride, polyaluminum sulfate, etc., may be used in combination with the dry and/or wet strength polymer (see ¶¶ 0304-0311).
Turumen is directed to papermaking (see ¶ 0001). Turumen exemplifies the use of 7 kg/ton of polyaluminum chloride in a retention system (see ¶ 0064).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a polyaluminum salt, such as polyaluminum chloride or polyaluminum sulfate, etc., in Zhu’s papermaking composition containing strengthening aids because Zhu teaches that the papermaking composition can contain other chemical aids for paper making, and it is well known in the art to include polyaluminum chloride, polyaluminum sulfate, etc., in such composition so as to take advantage of their known intended functions as coagulants, providing strength, and as retention aids, as taught by Ban ‘549, Jehn-Rendu, Krapsch and Turumen. It further would have been obvious to have included the polyaluminum salt in an amount of, for example, 7 kg/ton, because such is a suitable amount when using polyaluminum chloride as a retention aid, as taught by Turumen.
Further with respect to claim 32, Zhu teaches that the cationic polyacrylamide copolymer comprises from 0.1-50 mol%, e.g., 1-20 mol% cationic monomer (see ¶0037).
Response to Arguments
Applicant's arguments filed August 11, 2026 have been fully considered but they are not persuasive.
Arguments with respect to the rejection of claims 1-3, 5, 7, 9-11, 14, 16, 17, 19, 20, 22, 26, 28 and 29 over Yoshioka in combination with Zhu, the rejection of claims 13 and 21 over Yoshioka and Zhu further in view of Dulko, and the rejection claims 27 and 31 over Yoshioka and Zhu further in view of Heitaniemi:
Applicant argues that the cited references do not teach or suggest “the claimed high-efficiency strength program as a whole.” (Remarks, p. 9). Patent Owner further argues unexpected results on p. 11 of the Remarks:
The present disclosure confirms the significance of the claimed combination. The '391 Patent explains that "the methods described herein are believed to help mitigate problems associated with high charge demand paper machine systems by lowering particle charge density" and that "the methods allow for increased ash content in high charge demand paper machine systems while maintaining improved strength properties, retention, and dewatering efficiency" (col. 1, 11. 63 - col. 2, 11. 11). The examples show that strength aids comprising the strengthening agent and polyaluminum chloride outperformed corresponding controls without polyaluminum chloride in Scott bond and ash content (col. 15, 11. 44-49, Example 1; col. 15, 11. 62-66, Example 2-turbidity and dewatering efficiency), including at dosages of 7.5 kg/ton and 15 kg/ton. These results would not have been reasonably expected from the separate teachings of Yoshioka and Zhu.
These arguments are unpersuasive because the cited references render obvious the instant method of enhancing paper strength properties for the reasons set forth above in the rejections. In fact, as noted above, the papermaking composition in Zhu’s process includes a strengthening agent comprising a dialdehyde-modified polyacrylamide and a polyacrylamide, wherein the polyacrylamide strengthening agent can be an amphoteric polyacrylamide copolymer strengthening agent (see ¶¶ 0008-0009, 0024, 0034, 0037 and 0071-0075). Yoshika teaches that the combination of an amphoteric polyacrylamide copolymer and aluminum compound shows “a tremendous synergistic effect” and “significantly improves the excellent paper strength enhancing effect of the acrylamide polymer, thereby realizing the astonishing paper strength enhancing effect any yield improvement of the present invention.” (See eighth page of Yoshioka, emphasis added).
Furthermore, Applicant’s citation of Examples 1 and 2 in the ‘391 patent specification lacks persuasive force since the comparative compositions used in said Examples 1 and 2 are not fairly representative of the cited prior art and do not take into account the teachings of the cited prior art, in particular, the Yoshioka reference.
The “control” paper strength aid in Examples 1 and 2 of the ‘391 patent consisted of a 50:50 mixture of cationic dialdehyde-modified polyacrylamide strength aid (Nalco 63660) and amphoteric polyacrylamide strength aid (Nalco 63600) (see col. 16, lines 27-60). The control did not contain polyaluminum salt (see col. 16, lines 34-60). The inventive examples further added polyaluminum salt, i.e., polyaluminum chloride (PAC) to said straightening agent (see col. 16, lines 40-60 and Figs. 1 and 2).
However, since the control (comparative) experiment did not contain polyaluminum salt, it is not representative of Yoshioka, which specifically teaches a synergistic effect on strength of the combination of an amphoteric acrylamide-based polymer component and at least one aluminum compound selected from the group consisting of alumina sol, polyaluminum chloride and polyaluminum hydroxide (see the fifth and eighth pages). Yoshioka’s Example 2 uses 0.4%, i.e., 3.6 kg/ton, of amphoteric polyacrylamide copolymer in combination with polyaluminum chloride at 0.1% or 0.12%. i.e., 0.9 kg/ton or 1.8 kg/ton, respectively (see Yoshioka’s Table 2).
According to the ‘391 patent specification, the properties measured in Examples 1 and 2 of the ‘391 patent, i.e., bond and ash content (Fig. 1 of the ‘391 patent) and turbidity and dewatering (Fig. 2 of the ‘391 patent) are paper strength properties (see col. 16, lines 8-15). However, Yoshioka teaches that the synergistic combination of amphoteric polyacrylamide polymer with either polyaluminum chloride or polyaluminum hydroxide significantly improves the paper strength (eighth page of Yoshioka, emphasis added):
The inventors have not fully elucidated the mechanism of the interaction between the amphoteric acrylamide polymer component and the aluminum compound component added to the raw material pulp slurry of the present invention. However, when comparing the use of each of them alone with the use of both in combination, the latter shows a tremendous synergistic effect, so there is no doubt that there is an interaction between the two, and it is currently speculated as follows. Alumina sol used in the present invention. The aluminum compound component selected from the group consisting of polyaluminum chloride and polyaluminum hydroxide both contain highly positively charged polymeric polynuclear condensed ions as active ingredients, so that they are adsorbed and strongly bonded to the surface of the filler particles, and also firmly bonded to the anionic groups of the amphoteric acrylamide polymer component. On the other hand, the amphoteric acrylamide polymer component is efficiently fixed to the pulp fiber by the action of the cationic group. Therefore, it is considered that the coexistence of both the amphoteric acrylamide polymer component and the specific aluminum compound component makes the bond between the pulp fiber and the material very strong through the organic-inorganic complex farmed by the two components, and this bond is formed very efficiently. It is also presumed that the polyvalent cations of the aluminum compound component form effective cross-linking bonds between the amphoteric acrylamide polymer molecules due to their high molecular weight, which further significantly improves the excellent paper strength enhancing effect of the acrylamide polymer, thereby realizing the astonishing paper strength enhancing effect and yield improvement effect of the present invention.
Thus, the fact that Figs. 1 and 2 of the ‘391 patent showed improved paper strength properties when polyaluminum chloride was added to a strength agent which contained amphoteric polyacrylamide copolymer, as per Yoshioka, is expected based on Yoshioka’s teachings.
Applicant argues that the Office Action fails to provide an adequate explanation of why a person of ordinary skill in the art would have been motivated to arrive at the claimed invention; Yoshioka teaches that its own combination provides high filler-retention and paper-strength effects and it is generally unnecessary to use other papermaking additives for those purposes; and that Zhu does not identify polyaluminum salt as a component that provides the high-efficiency strength, retention, and dewatering advantages (Remarks, pp. 9-10).
Applicant’s arguments are unpersuasive. As noted above, it is the Yoshioka reference that teaches the synergistic combination of amphoteric polyacrylamide polymer with either polyaluminum chloride or polyaluminum hydroxide significantly improves the paper strength (see eighth page of Yoshioka). Yoshioka further teaches that other papermaking additives can be added in the usual manner (see seventh page). Yoshioka’s invention does not in any way preclude the use of other papermaking additives, including those that can further improve strength (see seventh page). Nowhere does Yoshioka teach that its filler-retention and paper-strength can’t be improved or are already optimum.
As also noted above, Zhu teaches that its paper-making composition can contain other chemical aids for paper-making (see ¶ 0046). Thus, the inclusion of known papermaking aids/additives in either Yoshioka’s or Zhu’s compositions would have been obvious to a skilled artisan. The U.S. Supreme Court in KSR International Co. v. Teleflex Inc. (2007) emphasized that this person is not a mechanical automaton but rather a person of ordinary creativity. There is nothing unobvious about including known additives in a composition when the references teach that additives can be added.
The rationale for including a cationic dialdehyde-modified polyacrylamide copolymer as per Zhu in Yoshioka’s pulp treatment, or alternatively, to have included Yoshioka’s aluminum compound, such as polyaluminum chloride or polyaluminum hydroxide, in Zhu’s paper-making composition is provided above in the rejection and reproduced below:
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further included a cationic dialdehyde-modified polyacrylamide copolymer in Yoshioka’s pulp treatment that already uses a combination of an amphoteric polyacrylamide copolymer and an aluminum compound because Yoshioka specifically teaches that the treatment does not preclude the use of other paper-making additives, and the use of a combination of a dialdehyde-modified polyacrylamide and a polyacrylamide, e.g., an amphoteric polyacrylamide copolymer, provides the advantages of substantially increased ash retention and/or increased strength of the paper, as taught by Zhu.
Alternatively, Zhu differs from the instant claims in not teaching that its papermaking composition further comprises a polyaluminum salt. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included Yoshioka’s aluminum compound, such as polyaluminum chloride or polyaluminum hydroxide, in Zhu’s paper-making composition because Zhu specifically teaches that other chemical aids can be contained in the composition, and so as to take advantage of the fact that the combination of an amphoteric polyacrylamide copolymer (already present in Zhu’s composition) and an aluminum compound provides for a synergistic effect, improves filler retention and provides for an excellent paper strength-enhancing effect, as taught by Yoshioka. Indeed, Zhu teaches use of fillers (see ¶¶ 0075 and 0083).
Applicant further provides arguments with respect to reasonable expectation of success (Remarks, pp. 10-11):
The cited references also do not provide a reasonable expectation of success. Yoshioka's proposed mechanism depends on interactions between positively charged polynuclear aluminum species and the anionic groups of an amphoteric acrylamide polymer (see Yoshioka at page 5), while Zhu's examples focus on premixed dialdehyde-modified polyacrylamide/polyacrylamide systems adjusted to specified pH values (see Zhu, ¶¶[0059]- [0063]). The Office Action has not shown why a person of ordinary skill in the art would have expected that adding Zhu's dialdehyde-modified polymer system to Yoshioka, or adding Yoshioka's aluminum compound to Zhu, would preserve or improve performance rather than disrupt the charge interactions and polymer associations on which each system depends. See MPEP § 2143.02 ("[t]he mere fact that references can be combined or modified does not render the resultant combination obvious unless the results would have been predictable to one of ordinary skill in the art").
Applicant’s arguments are unpersuasive. Yoshioka and Zhu do not place any limitations on their respective additives. Yoshioka teaches that “other paper making additives can … can be added in the usual manner.” (See the seventh page). Likewise, Zhu teaches that “[i] the case that the paper-making aid composition contains other chemical aids for paper-making, those skilled in the art can select the suitable kinds and amounts of the chemical aids for paper-making as required.” (See ¶ 0046). In fact, Zhu exemplifies polyethyleneimine as an additive (¶ 0016), and, at a pH of, for example, 6 (¶ 0015 of Zhu), a typical polyethyleneimine used in papermaking would be expected to have some protonated amine cationic groups. Zhu’s composition, as noted above, contains a cationic dialdehyde-modified polyacrylamide and an amphoteric polyacrylamide polymer. Accordingly, Applicant’s argument of disrupting charge interactions is unsupported by factual evidence.
Applicant argues that Dulko and Heitaniemi do not cure the deficiencies of Yoshioka and Zhu (Remarks, pp. 12). This argument is unpersuasive because Yoshioka and Zhu are not deficient for the reasons set forth above.
Arguments with respect to the rejection of claims 30 and 32 over Zhu in view of Ban ‘549, Jehn-Rendu, Krapsch and Turumen:
Applicant argues that the rejection is based on hindsight, the cited references do not provide a reasoned path that would have led a skilled artisan to the claimed composition of claim 30 as a whole with any reasonable expectation of success, and the proposed combination uses Applicant’s claims as a roadmap (Remarks, pp. 12-14). Applicant further attacks Ban ‘549, Jehn-Rendu, Krapsch and Turumen as not providing the claimed composition (Remarks, p. 13).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Contrary to Applicant’s argument, the composition of claim 30 is obvious and there is a reasonable expectation of success since this is a matter of using a conventional additive in Zhu’s papermaking composition. As noted in the rejection, Zhu’s papermaking composition contains an anionic dialdehyde-modified polyacrylamide-type strengthening agent as here claimed, and also contains a cationic polyacrylamide copolymer strengthening agent polyacrylamide as here claimed (see ¶¶ 0008-0009, 0024, 0034, 0037 and 0071-0075). Zhu specifically teaches that the papermaking composition can also contain other chemical aids for paper making. Accordingly, it would have been obvious to have included a well-known additive such as polyaluminum chloride, polyaluminum sulfate, etc., so as to take advantage of its known intended functions as a coagulant, providing strength, and as a retention aid, as taught by Ban ‘549, Jehn-Rendu, Krapsch and Turumen. It further would have been obvious to have included the polyaluminum salt in an amount of, for example, 7 kg/ton, because such is a suitable amount when using polyaluminum chloride as a retention aid, as taught by Turumen.
Applicant further argues the following on p. 14 of the Remarks:
The present disclosure further supports the patentability of claim 30. The '391 Patent discloses the claimed polyaluminum salt, the claimed dosage ranges for the polyaluminum salt and strengthening agent, the dialdehyde-modified polyacrylamide/polyacrylamide molar ratios, and the anionic dialdehyde-modified polyacrylamide copolymer/cationic polyacrylamide copolymer embodiment. The Office Action has not identified any teaching in the cited combination that would have led a skilled artisan to select and combine these features as a unified high-efficiency strength program.
Applicant’s arguments are unpersuasive since the features cited by Applicant would have been obvious. As noted in the rejection, Zhu’s papermaking composition contains an anionic dialdehyde-modified polyacrylamide-type strengthening agent as here claimed, and also contains a cationic polyacrylamide copolymer strengthening agent polyacrylamide as here claimed (see ¶¶ 0008-0009, 0024, 0034, 0037 and 0071-0075). The rejection also sets forth that the dosage of the sum of the dialdehyde-modified polyacrylamide-type strengthening agent and the polyacrylamide-type strengthening agent relative to the dry fiber in the pulp slurry is between 0.1 kg/ton dry fiber and 10 kg/ton dry fiber, e.g., between 1 kg/ton dry fiber and 10 kg/ton dry fiber, i.e., within the claimed kg/ton range (see ¶¶ 0071 and 0094).
Zhu teaches that the weight ratio between the dialdehyde-modified polyacrylamide and the polyacrylamide can be suitably selected by one skilled in the art according to the strength properties of the desired paper (see ¶ 0044). In fact, Zhu’s Example 2 (¶¶ 00144-00145) uses a 1:1 weight ratio of dialdehyde-modified polyacrylamide copolymer, i.e., GPAM copolymer solution 1, and amphoteric polyacrylamide copolymer 1, which each have a molecular weight of 1.2 million Daltons (see ¶¶ 00116 and 00133-00134). Thus, Zhu’s Example 2 has a molar ratio of 50:50, i.e., within the broad claimed molar range of 10:90 to 90:10.
As to the dosage of polyaluminum salt, it would have been obvious to have included the polyaluminum salt in an amount of, for example, 7 kg/ton, i.e., with the claimed range, because, as noted above, such is a suitable amount when using polyaluminum chloride as a retention aid, as taught by Turumen.
Duty to Disclose
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 10,982,391 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN D DIAMOND whose telephone number is (571)272-1338. The examiner can normally be reached Monday through Thursday 5:30 am to 3:00 pm, and Fridays from 5:30 am to 9:30 am.
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Signed:
/ALAN D DIAMOND/Patent Reexamination Specialist
Central Reexamination Unit 3991
Conferees:
/JOSEPH R KOSACK/Patent Reexamination Specialist
Central Reexamination Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991
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