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 .
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.
Claims 2, 7 & 8 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.
Regarding claim 2, claim 2 contains the trademark/trade name ‘Brookfield’ when referring to the viscometer used (p. 35, claim 2, line 2). Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the type of viscometer used to determine viscosity and, accordingly, the identification/description is indefinite.
Regarding claim 7, claim 7 recites the term the limitation of ‘the ethylenically unsaturated cross-linker’ (p. 38, claim 7, line 9). There is insufficient antecedent basis for this term.
Regarding claim 8, claim 8 recites the term the limitation of ‘the ethylenically unsaturated cross-linker’ (p. 38, claim 8, line 1). There is insufficient antecedent basis for this term.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) for failing to further limit the independent base claim.
Regarding claim 12, claim 12 further limits the ratio of polymeric dispersant to dispersed polymer to 1:1 to 1:0.9; however, this is outside of, & in contradiction to, the ratio of polymeric dispersant to dispersed polymer as detailed in the independent base claim 1 (i.e., 0.74:1 to 0.94:1).
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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, 2 & 5 – 16 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by, or in the alternative, under 35 U.S.C. § 103 as being obvious over Bellmann et al. (WO 2009/095245 A2).
Regarding claims 1, 15 & 16, Bellmann teaches methods for manufacturing a water-in-water polymer dispersion which comprises subjecting an aqueous reaction mixture comprising:
(i) a polymeric dispersant and
(ii) a monomer composition containing
a) one or more non-ionic ethylenically unsaturated monomers; and
b) one or more cationic ethylenically unsaturated monomers; and
c) one or more hydrophobic monomers, and
Subjecting said reaction mixture to a free radical polymerization to obtain the desired polymer dispersion (Abstract). The ratio of the dispersed polymer to polymeric dispersant is particularly from 1.5:1 to 1.2:1 (p. 29, third full paragraph). Converting these ratios results in a polymeric dispersant to dispersed polymer ratio of 0.67:1 – 0.83:1. Thus, the prior art teaches a range overlapping the claimed range with sufficient specificity to anticipate the claimed range.
In the alternative, the prior art range of 0.67:1 – 0.83:1 overlaps the claimed range of 0.74:1 – 0.98:1. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claim 2, Bellmann teaches the viscosity (as measured by a Brookfield viscometer) of the polymer dispersion is in the range of 500 mPas – 5,000 mPas (p. 29, [last line] – p. 30, [lines 1 & 2]).
Regarding claims 5 – 7, Bellman teaches non-ionic monomers used in the invention are preferably (meth)acrylamides, reading on formula (I), wherein R1 is H or CH3, and R2 & R3 are H, C1-C3 alkyl or C2 hydroxyalkyl (p. 15, third full paragraph).
Bellman also teaches the monomer composition further comprises cationic monomers (p. 16, first full paragraph) corresponding to formula (II), where R1 is H or CH3, Z is O or NH, Y1 is C1-C3 alkyl, Y5-Y7 are methyl, and Z- is a chlorine counterion. When the polymeric dispersant is a homopolymer, it is preferably derived from a cationic monomer (p. 10, third full paragraph). A preferred embodiment is disclosed wherein the polymeric dispersant is derived from a cationic monomer according to a general formula (II): (p. 12, top half).
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139
368
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Wherein:
--- R4 means hydrogen or C1-C3 alkyl,
--- Z1 means O, NH or NR5 (wherein R5 is C1-C3 alkyl)
--- Y0 means C2-C6 alkylene (possibly substituted with one or more hydroxy groups)
--- Y1, Y2, Y3, mean C1-C6 alkyl
--- X- means halogen, pseudo-halogen, acetate or SO4CH3-, or chloride
Bellmann teaches various embodiments of the invention comprising non-ionic & cationic ethylenically unsaturated monomers present in amounts of at least 5 wt.% (p. 32, Table).
Regarding claim 8, Bellman discloses suitable compounds for use as monomers according to a general formula (IV): (p. 52, claim 7).
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119
377
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Wherein:
--- Z2 means O, NH, NR9 (with R9 being C1-C3 alkyl),
--- R10 means H or C1-C3 alkyl,
--- R11 means C2-C6 alkylene,
--- R12 means H, C8-C32 alkyl, C8-C32 aryl &/or C8-C32 aralkyl,
--- n is an integer between 1 & 50
When R11 is a C2-C6 alkylene, the monomer of said general formula (IV) reads on all limitations established by claim 8.
Regarding claim 9, Bellman states when the polymeric dispersant is a homopolymer, it is preferably derived from a cationic monomer (p. 10, third full paragraph). Bellman discloses a preferred embodiment wherein the polymeric dispersant is derived from a cationic monomer according to a general formula (II): (p. 12, top half).
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media_image1.png
139
368
media_image1.png
Greyscale
Wherein:
--- R4 means hydrogen or C1-C3 alkyl,
--- Z1 means O, NH or NR5 (wherein R5 is C1-C3 alkyl)
--- Y0 means C2-C6 alkylene (possibly substituted with one or more hydroxy groups)
--- Y1, Y2, Y3, mean C1-C6 alkyl
--- X- means halogen, pseudo-halogen, acetate or SO4CH3-, or chloride
Regarding claim 10, Bellmann discloses an embodiment of the polymeric dispersant derived from acryloylamidopropyl trimethylammonium chloride (p.10, bottom half).
Regarding claims 11 & 12, Bellmann teaches various embodiments of the invention comprising the polymeric dispersant in amounts of 5 wt.% - 25 wt.% (p. 32, Table).
Regarding claim 13, Bellman teaches preferred embodiments comprise salt in amounts of 0.1 wt.% - 5.0 wt.% (p. 21, fourth full paragraph).
Regarding claim 14, Bellmann teaches an embodiment wherein the dispersed polymer comprises 0.1-25 mol% of cationic monomers (p. 32, Table). As the non-ionic and hydrophobic monomers carry no formal charge, the charge density of Bellmann’s dispersed polymer is 0.1-25 mol%.
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 3 & 4 are rejected under 35 U.S.C. § 103 for being unpatentable over Bellmann et al. (WO 2009/095245 A2); hereinafter Bellmann (A2), in view of Bellman et al. (US 8,822,586 B2); hereinafter Bellmann (B2).
Regarding claims 3 & 4, Bellmann (A2) is silent concerning torque about their inventive processes as required by the claims.
In the same field of endeavor, Bellmann (B2) teaches water-in-water dispersions as well as methods for producing said dispersions (Abstract). Equipment used to measure viscosity of said compositions was a Brookfield viscometer (col. 9, lines 38-53). Bellmann (B2) supplies empirical data demonstrating the maximum torque measured during polymerization resulted in a solid form after cooling (col. 10, Table 1). For inventive embodiments of Bellmann’s composition, the maximum torque recorded during polymerization was 38.9 N/cm (col. 11, Table 2, E5).
As both Bellmann (A2) and Bellmann (B2) inventively teach relatable water-in-water polymer dispersions, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Bellmann (A2) in view of Bellmann (B2) by utilizing the equipment disclosed in Bellmann (B2) as well as using the empirical data disclosed by Bellmann (B2) as a guide when agitating the reaction mixture to ensure that torque remains below 38.9 N/cm, as Bellmann (B2) teaches this to be an appropriate torque reading for similar compositions, and that torque readings of 65 N/cm result in a solid form.
Modification of Bellman (A2) in view of Bellmann (B2) as detailed above reads on all limitations established by claims 3 & 4. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762