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 non-final Office Action (dated 13 January 2026), the Applicant submits the following:
-- Claims 1, 2, 4, 6, 12 & 13 have been amended to overcome the claim objections.
-- No new matter has been entered.
The remarks & arguments provided by the Applicants have been thoroughly reviewed & fully considered but are ultimately found unpersuasive in view of the amended claims.
The Applicants traverse the rejections detailed in the aforementioned non-final Office Action on the basis that the weight average molecular weight range set forth in the claims is neither anticipated nor obvious in view of the prior art. Applicant cites rulings from the Court of Appeals for the Federal Circuit pertaining to overlapping ranges (Remarks, p. 10). The Applicants state Bellmann fails to anticipate or render obvious the subject matter of at least claims 1, 12 & 13 because the weight average molecular weight range taught in Bellman is not described with sufficient specificity required to establish that a reasonable fact finder would conclude that there is no reasonable difference in how the invention operates over the ranges (Remarks, p. 11).
Examiner notes the Applicant’s remarks pertaining to anticipating and ‘sufficient specificity’. What constitutes “sufficient specificity” is fact dependent. Bellmann was cited as teaching a range of 75,000 to 350,000 g/mol whereas the claims recite a range of 40,000 to 150,000 g/mol. Ranges within Bellman’s range falling from 75,000 to 150,000 g/mol also fall within the claimed range. This accounts for 27.2% of Bellmann’s range. In other words, more than 1 in 4 values disclosed by Bellmann fall within the claimed range. This degree of overlap is sufficiently high to establish anticipation in the absence of evidence of criticality or any evidence demonstrating any difference across the range. See, e.g., ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012) cited in MPEP § 2131.03.
Additionally, MPEP § 2131.03 notes that the question of “sufficient specificity” is similar to that of “clearly envisaging” a species from a generic teaching. MPEP § 2131.02(III) cites In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962), as an example of a generic disclosure that was sufficiently specific to anticipate a claimed species. In Petering, the prior art disclosed a generic chemical formula encompassing about 20 compounds, one of which was the claimed compound. Thus, in Petering, a degree of overlap of about 5% was found to be anticipatory. The present case involves a 27.2% degree of overlap, over five times higher than in Petering. This further demonstrates that Bellman discloses the claimed range with sufficient specificity to anticipate the claimed range.
With respect to obviousness of the claimed range under 35 U.S.C. § 103, the Applicant acknowledges that Bellman discloses an overlapping range. 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(I). Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. This is generally accomplished by showing that the claimed range achieves unexpected results relative to the prior art range. See MPEP § 2144.05(III)(A). The Applicant points to examples in the instant specification having a Mw of 90,000-120,000 g/mol which exhibit desirable stability and viscosity compared to similar products having a Mw of 300,000-400,000 g/mol (Remarks, bottom p. 11).
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. Additionally, whether the alleged 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. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP § 716.02(d).
The range of 90,000-120,000 g/mol in the exemplified data is not reasonably commensurate with the claimed range of 40,000-150,000 g/mol. The data is insufficient to establish whether the results in question occur over the entire claimed range. In addition, the materials included in the inventive examples are not reasonably commensurate in scope with the breadth of materials encompassed by the claims, and the Applicant has presented no additional data or technical reasoning that would allow one of ordinary skill in the art to extend the results to the full scope of the claims.
This rejection is FINAL.
Claim Rejections - 35 USC § 102/103
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 – 13 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 unpatentable over Bellmann et al. (WO 2009/095245 A2).
Regarding claims 1, 12 & 13, Bellman teaches methods for manufacturing a water-in-water polymer dispersion which comprises subjecting an aqueous reaction mixture comprising:
a cationic polymeric dispersant, and
a monomer composition containing:
one or more non-ionic ethylenically unsaturated monomers,
one or more cationic ethylenically unsaturated monomers, and
one or more hydrophobic monomers according to a general formula (I):
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94
263
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Wherein:
--- R1 means hydrogen or C1-C3 alkyl,
--- R2 means C5-C24 alkyl, and
--- Z0 means O, NH or NR3, where R3 is C1-C3 alkyl, and
Subjecting said reaction mixture to a free radical polymerization to obtain the desired polymer dispersion (Abstract).
The polymeric dispersant has a preferred weight average molecular weight of 75,000 – 350,000 g/mol (p. 10, lines 2-3), This overlaps with sufficient specificity to anticipate the claimed range of 40,000 – 150,000.
In the alternative, the prior art range of 75,000 – 350,000 g/mol overlaps the claimed range of 40,000 – 150,000. 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(I).
Bellman teaches the cationic polymeric dispersant is obtained from the radically polymerizable cationic dimethylaminopropyl acrylamide quaternized with methyl chloride (i.e., DIMAPA quat.) (p. 10, bottom paragraph), resulting in repeated units of the compound below incorporated into the polymer backbone:
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124
292
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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. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claims 2 & 3, 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. 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. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claims 4, 5 & 10, 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). Said table details a variant (1) comprising 0.1 wt.% – 90 wt.% polymerizable monomers consisting of cationic, non-ionic and hydrophobic monomers (p. 32, Table, Variant 1). 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.
Regarding claim 6, 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):
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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
(p. 12, top half).
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. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 7, 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 8, 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 the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claim 9, Bellmann teaches various embodiments of the invention comprising the polymeric dispersant in amounts of 5 wt.% - 25wt.% (p. 32, Table). 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.
Regarding claim 11, 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 the 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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