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 .
Response to Arguments
In response to the Office Action (dated 15 January 2026), the Applicant submits the following:
-- Claims 1, 7, 8, 15 & 16 have been amended.
-- Claims 11 & 12 have been cancelled.
-- No new matter has been entered.
The arguments provided by the Applicant have been thoroughly reviewed & fully considered but are ultimately found unpersuasive in view of the amended claims.
The amendments of claims 7 & 8 have alleviated the issue of antecedent basis detailed in the prior Office Action, yet, the Applicant challenges the rejection of claim 2 under 35 U.S.C. § 112(b). The Applicant argues a that a trademark/tradename does not render a claim indefinite and points to MPEP § 608.01(V)(I) and 15 U.S.C. § 1127 for support (Remarks, p. 9 & 10).
Examiner highlights that MPEP § 608.01(v)(I) relates to the general use of trademarks/trade names in patent applications. MPEP § 2173.05(u) relates specifically to indefiniteness arising from the use of trademarks/trade names in patent claims. Per MPEP § 2173.05(u), if 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 the 35 U.S.C. § 112(b). In the present case, the trademark ‘Brookfield’ is used as a claim limitation to identify a particular product (i.e. a viscometer). Therefore, the rejection of claim 2 under 35 U.S.C. § 112(b) is proper & maintained.
The Applicant states the amendments thus put the claims in a position where Bellmann would not be able anticipate said claims with sufficient specificity, namely the ratio of the polymeric dispersant to the dispersed polymer, molecular weight of the polymeric dispersant and amount of the polymeric dispersant (Remarks, p. 11).
Examiner agrees with the Applicant as the range for the molecular weights taught by Bellmann is relatively broad, however, the claims are nevertheless rendered obvious over the prior art, detailed herein.
The Applicant argues the inventors achieved unexpected results and points to examples (Table 2) in the present disclosure for support. Applicants identify the ideal ratio of polymeric dispersant to the dispersed polymer to be 0.76:1 – 0.88:1 (Remarks, p. 11), and states that when the above ratio is outside of this range, the resultant polymer dispersion(s) exhibit undesirable properties.
Examiner notes that the true range taught by Table 2 is 0.763:1 – 0.868:1 (Specification, p. 33, Table 2). This means the Applicant also intends to claim a ratio of polymeric dispersant to the dispersed polymer which yield said undesirable properties. Table 2 illustrates that ratios falling outside the claimed range demonstrate results similar to compositions falling within the claimed range (note in particular the fifth example in the table with a ratio of 0.868:1). Additionally, the examples provided in the specification are not reasonably commensurate in scope with the claims. Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See MPEP § 716.02(d). Furthermore, applicants have the burden of explaining the data proffered as evidence of non-obviousness. See MPEP § 716.02(b). The examples in the specification are not reasonably commensurate in scope with the claims, and the Applicant has provided no explanation regarding how the exemplified results could reasonably be extended to the full scope of the claims. The examples are therefore insufficient to establish non-obviousness of the claims.
Applicants recognize, that "[g]enerally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical". Applicants also admit, that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”, as detailed in MPEP § 2144.05. Applicants further concede that the obvious optimization standards are appropriately applied under circumstances where optimum or workable ranges are discoverable by routine experimentation. Under the instant circumstances, however, Applicants submit that a skilled person would not reasonably have been expected to adjust the various factors within the ranges as set forth in claims 1 and 15 as amended, namely the ratio of the polymeric dispersant to the dispersed polymer, Mw of the polymeric dispersant, and amount of the polymeric dispersant (Remarks, p. 12).
Examiner highlights the Applicant’s argument that one of ordinary skill in the art would not have been motivated to optimize the various claimed parameters through routine experimentation to arrive at the claimed invention. The rejection does not rely on routine optimization and therefore, the argument above is considered not relevant.
This rejection is FINAL.
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.
Claim 2 is rejected under 35 U.S.C. § 112(b) for being indefinite.
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). 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.
Claim Rejections – 35 U.S.C. § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 5 – 10 & 13 – 16 are rejected 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
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, overlapping the range 0.76:1 – 0.88:1, as required by the claim. Bellmann further discloses various embodiments of the invention comprising the polymeric dispersant in amounts of 5 wt.% - 25wt.% (p. 32, Table). Bellmann also teaches the molecular weight of the polymeric dispersant to be in a preferable range of 50,000 – 1,500,000 g/mol (p. 9, bottom paragraph). 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. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
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]). 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 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). 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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172
455
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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). 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. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
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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148
469
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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. 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. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
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
172
455
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.
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. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 10, Bellmann discloses an embodiment of the polymeric dispersant derived from acryloylamidopropyl trimethylammonium chloride (p.10, bottom half). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 13, Bellman teaches preferred embodiments comprise salt in amounts of 0.1 wt.% - 5.0 wt.% (p. 21, fourth full paragraph). 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 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%. 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.
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) remains as applied above. 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 ranges disclosed by the prior art. See MPEP § 2144.05.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to 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
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